Case T‑306/20
Hijos de Moisés Rodríguez González, SA
v
European Union Intellectual Property Office
Judgment of the General Court (Sixth Chamber, Extended Composition), 29 June 2022
(EU trade mark – Invalidity proceedings – EU figurative mark La Irlandesa 1943 – Absolute grounds for invalidity – Declaration of invalidity by the Grand Board of Appeal of EUIPO – Evidence submitted for the first time before the Court – Relevant date for the examination of an absolute ground for invalidity – Mark of such a nature as to deceive the public – Article 7(1)(g) of Regulation (EC) No 207/2009 (now Article 7(1)(g) of Regulation (EU) 2017/1001) – Bad faith – Article 52(1)(b) of Regulation No 207/2009 (now Article 59(1)(b) of Regulation 2017/1001))
1. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Registration contrary to Article 7 of Regulation No 207/2009 – Relevant date for the examination of an absolute ground for invalidity – Date of filing of the application for registration – Taking into consideration evidence subsequent to that date – Whether permissible – Condition
(Council Regulation No 207/2009, Arts 7 and 52(1)(a))
(see paragraphs 54, 67, 68)
2. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Marks of such a nature as to deceive the public – Marks indicating a geographical origin – Assessment of the misleading nature on the date of filing of the application for registration – Inconsistency between the mark applied for and the goods covered
(Council Regulation No 207/2009, Arts 7(1)(g) and 52(1)(a))
(see paragraphs 66, 71-73)
3. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Applicant in bad faith when filing the trade mark application – Criteria for assessment – Taking into account all relevant factors at the time of filing of the application for registration – Taking into account use of the mark subsequent to filing – Whether permissible – Condition
(Council Regulation No 207/2009, Art. 52(1)(b))
(see paragraphs 81-87, 94)
4. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Applicant in bad faith when filing the trade mark application – Figurative mark La Irlandesa 1943
(Council Regulation No 207/2009, Art. 52(1)(b))
(see paragraphs 95-102, 105, 106)
Résumé
A trade mark containing a word relating to a geographical origin used in the past which is then registered and used for goods which no longer have that origin is likely to mislead consumers as to the geographical origin of those goods. Such a mark may be regarded as having been registered in bad faith
For decades, the applicant, Hijos de Moisés Rodríguez González, SA, purchased Irish butter from Ornua Co-operative Ltd and sold it in the Canary Islands (Spain) under trade marks containing the element ‘la irlandesa’. After that business relationship came to an end in 2011, the applicant continued to sell goods under those trade marks.
In 2014, it obtained, from the European Union Intellectual Property Office (EUIPO), registration of the EU figurative mark La Irlandesa 1943 for various foodstuffs. (1)
Ireland and Ornua Co-operative applied to EUIPO for a declaration that that mark was invalid on the ground that it was deceptive and that its registration had been applied for in bad faith. (2)
The Cancellation Division of EUIPO rejected the application for a declaration of invalidity.
However, the Grand Board of Appeal of EUIPO annulled the Cancellation Division’s decision and declared the contested mark invalid. It found that, at the time when the application for registration was filed, that mark was of such a nature as to deceive the public as to the geographical origin of the goods at issue and that the registration of that mark had been applied for in bad faith.
The applicant brought an action before the General Court seeking annulment of the decision of the Grand Board of Appeal.
The Court dismisses that action, finding that the contested mark was not misleading at the time of the application for registration, but that the applicant acted in bad faith at the time of that application. On this occasion, it clarifies the conditions for applying the concepts of ‘deceptive mark’ and ‘bad faith on the part of the applicant’ in the context of trade marks indicating a geographical origin of goods.
Findings of the Court
First of all, the Court notes that, when seeing the contested mark affixed to the goods at issue, Spanish-speaking consumers, who constitute the relevant public, will believe that those goods originate in Ireland.
Next, as regards the deceptive nature of the contested mark, the Court points out that, unlike the examination of an application for revocation, (3) which requires that account be taken of evidence subsequent to the filing of the mark, such as the use made of that mark, the examination of an application for a declaration of invalidity based on the deceptive nature of the mark (4) requires that it be established that the sign filed for the purposes of registration as a mark was per se of such a nature as to deceive the consumer at the time of filing of the application for registration, since the subsequent management of that sign is irrelevant. In the case of invalidity, it is necessary to assess whether the mark should not have been registered ab initio for reasons already existing on the date of that application, since the consideration of subsequent evidence can serve only to clarify the circumstances as they were on that date.
In the present case, the Grand Board of Appeal should have ascertained whether, on the date of the application for registration, there was any inconsistency between the information which the contested mark conveyed and the characteristics of the goods designated in that application. Since the list of goods did not contain any indication of their geographical origin and could therefore cover goods originating from Ireland, there was no such inconsistency at the time of the application, with the result that it was not possible to find that the contested mark was deceptive on that date. Thus, the Grand Board of Appeal erred in criticising the applicant for not having limited that list to goods originating from Ireland. Furthermore, since the contested mark could not be regarded as misleading on the date of the application for registration, the subsequent evidence, which did not concern the situation on that date, could not confirm such a misleading nature. Consequently, the Grand Board of Appeal erred in that regard.
Lastly, as regards bad faith on part of the applicant when filing the contested mark, (5) the Court states that, in order to decide that question, the Grand Board of Appeal could legitimately rely on evidence – and even on the use of that mark – subsequent to the date of that filing, since that evidence constituted evidence relating to the situation on the relevant date.
In the present case, first, a not insignificant part of the goods sold by the applicant under the contested mark was not of Irish origin and therefore did not correspond to the relevant public’s perception of those goods. Although that fact is irrelevant for the purpose of examining whether the trade mark is misleading, it is not irrelevant for the purpose of examining bad faith on the part of the applicant. Since Spanish-speaking consumers had become accustomed over the course of several decades to the contested mark being affixed to butter originating from Ireland, they could be misled as to the geographical origin of those goods once the applicant had extended the use of the mark to goods other than butter of Irish origin.
Secondly, cases in which marks which were similar to the mark at issue in the present case were declared to be invalid or refused by EUIPO and the Spanish authorities confirm that the contested mark could be perceived as indicating the Irish origin of goods. They also indicate that the use of the mark for goods not of Irish origin was controversial as regards its potential deceptive nature; a fact of which the applicant was necessarily aware on the date of the application for registration and which is therefore capable of supporting the existence of bad faith on the part of the applicant on that date.
Thirdly, the applicant had adopted a commercial strategy of association with the marks containing the element ‘la irlandesa’ which were linked to the applicant’s former business relationship with Ornua Co-operative, in order to continue to take advantage of that relationship, which has been terminated, and the marks which were linked to it.
Accordingly, the Court finds that registration of the contested mark was contrary to honest commercial and business practices and that the Grand Board of Appeal was correct in finding that the applicant acted in bad faith. Since that finding is such as to justify, by itself, the operative part of the decision of the Grand Board of Appeal, the Court dismisses the action.