JUDGMENT OF THE GENERAL COURT (Second Chamber)
6 March 2024 (*)
(EU trade mark – Invalidity proceedings – EU figurative mark DEC FLEXIBLE TECHNOLOGIES and EU figurative mark representing a square with curves – Absolute ground for invalidity – Bad faith – Article 59(1)(b) of Regulation (EU) 2017/1001
In Cases T‑59/23 and T‑68/23,
DEC Technologies BV, established in Enschede (Netherlands), represented by R. Brtka and M. Witzmann, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by C. Bovar and E. Markakis, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Tehnoexport d.o.o. Inđija, established in Inđija (Serbia), represented by C. Schumacher, lawyer,
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli (Rapporteur), President, V. Tomljenović and L. Spangsberg Grønfeldt, Judges,
Registrar: R. Ūkelytė, Administrator,
having regard to the written part of the procedure,
further to the hearing on 23 November 2023,
gives the following
Judgment
1 By its actions under Article 263 TFEU, the applicant, DEC Technologies BV, seeks the annulment of the decisions of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 6 December 2022 (Case R 2009/2021-5) and of 30 November 2022 (Case R 2012/2021-5) (taken together, ‘the contested decisions’).
Background to the dispute
2 On 27 August 2020, the intervener, Tehnoexport d.o.o. Inđija, filed an application for a declaration of invalidity with EUIPO in respect of each of the following two EU trade marks:
– the EU trade mark which was registered on 4 June 2020, following an application which had been filed on 11 February 2020, in respect of the figurative sign reproduced below (‘the first contested mark’):
– the EU trade mark which was registered on 4 January 2020, following an application which had been filed on 12 September 2019, in respect of the figurative sign reproduced below (‘the second contested mark’):
3 The goods covered by each of the two contested marks are in Classes 6, 11, 17 and 19 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 6: ‘Flexible and rigid tubes and hoses of metal, all for transporting air, and parts and fittings therefor’;
– Class 11: ‘Heating, air treatment and ventilation apparatus and parts and accessories thereof as far as comprised in this class, especially air ducts for heating, cooling, ventilation and air treatment purposes and parts and accessories thereof’;
– Class 17: ‘Flexible tubes and hoses, not of metal, all for the transport of air and parts and accessories thereof; insulating materials for air ducts’;
– Class 19: ‘Rigid tubes, not of metal, for transporting air, and parts and fittings therefor’.
4 The second contested mark also covers ‘dampers (heating); filters for air conditioning; chimney flues; chimney blowers’ in Class 11.
5 The ground relied on in support of each of the applications for a declaration of invalidity was that set out in Article 59(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1), namely bad faith.
6 By two decisions adopted on 7 October 2021, the Cancellation Division upheld the applications for a declaration of invalidity on the basis of Article 59(1)(b) of Regulation 2017/1001.
7 On 2 December 2021, the applicant filed a notice of appeal with EUIPO against each of the Cancellation Division’s decisions.
8 By the contested decisions, the Board of Appeal dismissed the appeals. As a preliminary point, it refused the request for the organisation of oral proceedings submitted by the applicant and accepted the evidence which the parties had submitted at the stage of the appeal. As to the substance, the Board of Appeal observed, first of all, that there had been long-standing and intense commercial cooperation between the applicant and the intervener and that there was therefore a reciprocal duty of fair play between them. Next, it found that there was no evidence to support the applicant’s claim that, on the one hand, it was behind the creation of the logo consisting of the figurative element contained in the contested marks and in the sign used by the intervener and, on the other hand, it had used that logo before the intervener. The Board of Appeal also pointed out that the sign used by the intervener was at least similar to the first contested mark and highly similar to the second contested mark. Lastly, it took the view that all the objective elements in the file established that the applicant had filed the applications for registration of the contested marks, and also applications for registration relating to other similar EU trade marks and domain names, with the intention of undermining the intervener’s interests. The Board of Appeal therefore confirmed the declaration of invalidity of the contested marks.
Forms of order sought
9 The applicant claims that the Court should:
– annul the contested decisions;
– order EUIPO to pay the costs.
10 EUIPO contends that the Court should:
– dismiss the actions;
– order the applicant to pay the costs in the event that a hearing is convened.
11 The intervener contends that the Court should:
– dismiss the actions;
– order the applicant to pay the costs.
Law
12 After hearing the parties’ views in that regard at the hearing, the Court has decided to join the present cases for the purposes of the judgment, in accordance with Article 68(1) of the Rules of Procedure of the General Court.
13 As to the substance, the applicant relies on two pleas in law, alleging, in essence, first, infringement of Article 59(1)(b) of Regulation 2017/1001 and, secondly, infringement of Article 96(1) of that regulation.
The first plea, alleging infringement of Article 59(1)(b) of Regulation 2017/1001
14 The applicant claims that the Board of Appeal erred in finding that the intervener had proved that the contested marks had been filed in bad faith.
15 First, it submits that, contrary to what the Board of Appeal found, there is no clear visual similarity between the first contested mark and the sign used by the intervener.
16 Secondly, it contends that the Board of Appeal erred in finding that the intention underlying the filing of the applications for the contested marks was dishonest. It submits that that filing was not made on a speculative basis or with the aim of obtaining financial compensation or even in order to take advantage of the intervener’s reputation, whereas the applicant and the figurative element of the contested marks, which is registered as a national trade mark in Serbia, have a reputation in that State. According to the applicant, that filing was intended to prevent the unlawful use of the contested marks by the intervener when its business relationship with the intervener had deteriorated on account of the intervener’s attitude.
17 EUIPO and the intervener contend that the first plea is unfounded.
Preliminary observations
18 Article 59(1)(b) of Regulation 2017/1001 provides that an EU trade mark is to be declared invalid on application to EUIPO or on the basis of a counterclaim in infringement proceedings where the applicant was acting in bad faith when he filed the application for the trade mark.
19 In that regard, it must be pointed out that, if a concept set out in Regulation 2017/1001 is not defined by that regulation, its meaning and scope must be determined by considering its usual meaning in everyday language, whilst also taking into account the context in which it occurs and the objectives pursued by that regulation (see judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 43 and the case-law cited).
20 That applies to the concept of ‘bad faith’ referred to in Article 59(1)(b) of Regulation 2017/1001, in the absence of any definition of that concept by the EU legislature.
21 While, in accordance with its usual meaning in everyday language, the concept of ‘bad faith’ presupposes the presence of a dishonest state of mind or intention, that concept must also be understood in the context of trade mark law, which is that of the course of trade. In that regard, Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1) and Regulation 2017/1001, which were adopted successively, have the same objective, namely the establishment and functioning of the internal market. The rules on the EU trade mark are aimed, in particular, at contributing to the system of undistorted competition in the European Union, in which each undertaking must, in order to attract and retain customers through the quality of its goods or services, be able to have registered as trade marks signs which enable the consumer, without any possibility of confusion, to distinguish those goods or services from others which have a different origin (see judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 45 and the case-law cited).
22 Consequently, the absolute ground for invalidity referred to in Article 59(1)(b) of Regulation 2017/1001 applies where it is apparent from relevant and consistent indicia that the proprietor of an EU trade mark has filed the application for registration of that mark not with the aim of engaging fairly in competition but with the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties, or with the intention of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark, in particular the essential function of indicating origin referred to in paragraph 21 above (judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 46).
23 The intention of an applicant for a trade mark, which must, in accordance with the provisions of Article 59(1)(b) of Regulation 2017/1001, be assessed at the time when the mark was filed, is a subjective factor which must, however, be determined objectively by the competent administrative and judicial authorities. Consequently, any claim of bad faith must be the subject of an overall assessment, taking into account all the factual circumstances relevant to the particular case. (see, to that effect, judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 47 and the case-law cited).
24 In the context of the overall analysis undertaken pursuant to Article 59(1)(b) of Regulation 2017/1001, account may, in particular, be taken of the origin of the contested sign and its use since its creation, the commercial logic underlying the filing of the application for registration of that sign as an EU trade mark, and the chronology of events leading up to that filing (see judgments of 21 April 2021, Hasbro v EUIPO – Kreativni Dogadaji (MONOPOLY), T‑663/19, EU:T:2021:211, paragraph 38 and the case-law cited, and of 6 July 2022, Zdút v EUIPO – Nehera and Others (nehera), T‑250/21, EU:T:2022:430, paragraph 30 and the case-law cited).
25 Furthermore, it is for the applicant for a declaration of invalidity who intends to rely on Article 59(1)(b) of Regulation 2017/1001 to prove the circumstances which make it possible to conclude that an application for registration of an EU trade mark was filed in bad faith, the good faith of the trade mark applicant being presumed until proven otherwise (see judgment of 21 April 2021, MONOPOLY, T‑663/19, EU:T:2021:211, paragraph 42 and the case-law cited).
26 Where EUIPO finds that the objective circumstances of the particular case which were relied on by the applicant for a declaration of invalidity may lead to the rebuttal of the presumption of good faith which the proprietor of the mark at issue enjoys when he or she files the application for registration of that mark, it is for the proprietor of that mark to provide plausible explanations regarding the objectives and commercial logic pursued by the application for registration of that mark (judgment of 21 April 2021, MONOPOLY, T‑663/19, EU:T:2021:211, paragraph 43).
27 It is in the light of those considerations that the first plea must be examined.
The assessment as to whether there was bad faith
28 In the present case, the Board of Appeal’s assessment regarding the applicant’s bad faith is based, in essence, on the analysis, first, of the cooperation between the applicant and the intervener, secondly, of the creation of the figurative element which is common to the contested marks and to the sign used by the intervener, thirdly, of the similarity of the signs at issue and of the knowledge of the use of the earlier sign, and, fourthly, of the applicant’s intention on the date on which the applications for registration of the contested marks were filed.
– The cooperation between the applicant and the intervener
29 The Board of Appeal stated that the applicant and the intervener had been in a business relationship since 2000 and that their cooperation had intensified as from 2012, when A, an employee of the applicant, had also started to work for the intervener. Furthermore, the Board of Appeal observed, in essence, that that cooperation had deteriorated at the end of 2018 and had ended in January 2022. It found that the commercial cooperation between the applicant and the intervener had been long-standing and intense and that, consequently, there was a reciprocal duty of fair play between them in relation to the legitimate interests and expectations of each of them at the end of that cooperation.
30 The applicant does not dispute those assessments and there is nothing in the case file that is capable of calling them into question.
– The creation of the figurative element which is common to the contested marks and to the sign used by the intervener
31 The Board of Appeal examined the parties’ contradictory arguments regarding the creation and use of the figurative element which is common to the contested marks and to the sign used by the intervener. According to the applicant, it was the one which began to use that figurative element, at the latest in 2004, the intervener having used it only as from the years 2014/2015, with its authorisation, which was given via A, who was at that time employed by the applicant and the intervener. On the other hand, according to the intervener, it had that element designed as an integral part of its new logo. In essence, the Board of Appeal found that the applicant’s version was not supported by conclusive evidence, unlike that of the intervener.
32 The applicant disputes the Board of Appeal’s assessment. It submits that it proved that it was the one which had developed the figurative element of the contested marks and used it for the first time and that the Board of Appeal failed to take into account certain items of evidence or misinterpreted them. In particular, the applicant claims that, unlike the intervener, it has always used blue logos with regard to the goods which it markets. It maintains that, in the context of its cooperation with the intervener, it authorised the intervener to approximate the interveners’s logo to its own logo, as is clear from the affidavits of two of its employees, A and B, and from various documents proving that it was using the figurative element in the 2000s. It adds that that figurative element is clearly a ‘derivative’ or ‘deconstruction’ of its earlier signs and submits that the Board of Appeal made contradictory statements in that regard. Lastly, it submits that the Board of Appeal erred in finding that the evidence submitted by the intervener was capable of proving that the intervener was behind the creation of the figurative element at issue.
33 It must be pointed out at the outset that the principle which prevails in EU law is that of the unfettered evaluation of evidence, from which it follows, in particular, that the only relevant criterion for the purpose of assessing the probative value of evidence lawfully adduced relates to its credibility (judgment of 19 October 2022, Louis Vuitton Malletier v EUIPO – Wisniewski (Representation of a chequerboard pattern II), T‑275/21, not published, EU:T:2022:654, paragraph 30; see also, to that effect, judgment of 25 January 2007, Dalmine v Commission, C‑407/04 P, EU:C:2007:53, paragraphs 49 and 63).
34 In order to assess the probative value of a statement or document, it is necessary to carry out an overall and concrete assessment of that statement or document (see, to that effect and by analogy, judgment of 19 December 2013, Siemens and Others v Commission, C‑239/11 P, C‑489/11 P and C‑498/11 P, not published, EU:C:2013:866, paragraph 165). It is necessary to take account, in particular, of the person from whom it originates, the circumstances in which it came into being, the person to whom it was addressed and whether, on the face of it, it appears sound and reliable (see judgment of 9 September 2020, Glaxo Group v EUIPO (Shade of the colour purple), T‑187/19, not published, EU:T:2020:405, paragraph 92 and the case-law cited).
35 According to the case-law, sworn statements by a person with close ties to the party concerned are of lower probative value than those of third parties and cannot therefore on their own constitute sufficient evidence (see judgment of 16 June 2015, H.P. Gauff Ingenieure v OHIM – Gauff (Gauff JBG Ingenieure), T‑585/13, not published, EU:T:2015:386, paragraph 28 and the case-law cited). That is why the particulars in a written sworn statement by a person linked, in any manner whatsoever, to the company relying on it must, in any event, be supported by other evidence (see, to that effect, judgments of 12 March 2014, Globosat Programadora v OHIM – Sport TV Portugal (SPORT TV INTERNACIONAL), T‑348/12, not published, EU:T:2014:116, paragraphs 32 and 33, and of 11 December 2014, Nanu-Nana Joachim Hoepp v OHIM – Vincci Hoteles (NAMMU), T‑498/13, not published, EU:T:2014:1065, paragraph 38).
36 In the present case, in the first place, in respect of the evidence adduced by the intervener for the purposes of proving that it was behind the creation of the figurative element at issue, the Board of Appeal referred to C’s affidavit, dated 12 March 2021, according to which his company had been engaged by the intervener in 2014 in order to design a new logo on the basis of the logo which it had been using until then and which is reproduced below:
37 In his affidavit, C states, inter alia, that he sent several proposals for logos to the intervener on 30 June 2014 and that, following various exchanges between them, the logo reproduced below was chosen:
38 The Board of Appeal found that C’s affidavit was supported by various items of evidence. What was concerned was the production of various emails which had been exchanged: in particular, first, the email of 30 June 2014 by which C had sent the various proposals for logos to the intervener, via its former employee, D, who was, inter alia, responsible for cooperation with the applicant; secondly, the email of the same date by which D had sent those proposals to A who, as has been stated in paragraph 29 above, was then employed both by the applicant and by the intervener; thirdly, the reply of the same date by which A had expressed his preference for the first logo; and, fourthly, the email of 17 June 2015 by which the intervener had distributed the new logo which had been chosen within its departments. It also concerned the invoice dated 11 May 2015 corresponding to the services provided by C’s company to the intervener.
39 In that regard, it is true that, as the applicant submits, the invoice sent by C’s company to the intervener includes a ‘logo design’ service without any further information. Similarly, the exchange of emails between C and D, an employee of the intervener, does not reproduce the figurative element at issue. However, it includes the various proposals for logos drawn up by C, including a logo which is very similar to that which was finally adopted by the intervener, but is in red, a logo which, following exchanges with the intervener, evolved to become the figurative element at issue.
40 It must be held that, taken as a whole, the documents thus submitted by the intervener, which include emails sent to A and by A, an employee of the applicant, the authenticity of which is not called into question, bear out C’s affidavit regarding the process by which the figurative element at issue was created.
41 In the second place, the evidence adduced by the applicant for the purposes of proving that, contrary to the intervener’s substantiated claims, it was behind the creation of the figurative element at issue includes, first, an affidavit drawn up on 25 December 2020 by its employee, A. In that affidavit A states, inter alia, that, in 2015, the applicant accepted the intervener’s request to approximate its visual identity to that used by the applicant, including the use of the logo consisting of the figurative element at issue.
42 Contrary to what the applicant claims, it is not apparent from the wording of that affidavit that the applicant was behind the creation of the figurative element at issue or that it was already using it in 2015. It is merely apparent from that affidavit that the intervener sought the applicant’s authorisation to use the aforementioned figurative element, in order to approximate its logo to that which was then used by the applicant. However, A’s affidavit does not identify the logo which was then used by the applicant. In that regard, the affidavit states that, since the 1990s, the applicant had been well known in the Balkans for its goods in the field of air-conditioning and ventilation ducts, especially for its blue logo. However, as the applicant acknowledged at the hearing, its use of the figurative element at issue before 2004 has not been established. Furthermore, it is common ground that the applicant was using, inter alia, the blue sign reproduced below:
43 It must be added that the fact that the intervener sought authorisation to use the figurative element at issue in order to approximate its visual identity to that of the applicant cannot, in the absence of any other conclusive documentary evidence, be regarded as proof that that element was used by the applicant.
44 In that context, the Board of Appeal was entitled, without making any error of assessment, to find that the affidavit of A, an employee of the applicant, was not capable of proving that the applicant had used the figurative element at issue before the intervener.
45 Secondly, the applicant merely claims that the figurative element at issue was already contained in its earlier marks and that that element reproduces an isolated part of the figurative element in those marks. However, as the Board of Appeal found, in essence, the figurative element at issue is capable of resembling that which appears both in the applicant’s earlier marks and in the intervener’s former logo, which has been reproduced in paragraph 36 above.
46 Furthermore, the applicant does not dispute the Board of Appeal’s finding that, in essence, the colour blue, which is common to its earlier marks and to the figurative element at issue cannot be decisive, since it is well known that that colour is generally used by undertakings which market parts for air conditioning and air ventilation systems.
47 Thirdly, the applicant produced before the Board of Appeal an affidavit dated 4 February 2022 which was made by B, the former sales representative of the applicant in the Nordic countries, in which he states that he has distributed the applicant’s promotional material since the 1990s and that that material bore various signs, including the figurative element at issue, without, however, specifying the date as from which that element was affixed to the material. The applicant also produced three newsletters from the years 2004, 2006 and 2008 which it submits were distributed at international fairs. Both the earlier mark DEC which has been reproduced in paragraph 42 above and the logo representing the figurative element at issue are affixed to those newsletters. In that regard, the Board of Appeal observed that the applicant had not adduced any evidence capable of establishing that those newsletters had actually been distributed to third parties, although they were the only documented examples which had been submitted by the applicant for the purposes of proving that the figurative element at issue had been used before 2015. It must also be stated, in that regard, that the other evidence adduced by the applicant, namely a promotional video which appeared on YouTube and invoices, are dated 22 April and 24 February 2020 respectively. Consequently, the Board of Appeal did not make any error of assessment in finding that the evidence thus produced was not sufficiently conclusive.
48 Fourthly, the Board of Appeal pointed out that the documents relating to the court proceedings between the parties did not establish that the applicant was behind the creation of the figurative element at issue.
49 In that regard, the applicant relies on the decision of 10 November 2021 of the Basic Court of Stara Pazova (Serbia), from which it is apparent, according to the applicant, first, that it did not infringe the intellectual property rights acquired by the intervener and, secondly, that the intervener has made false accusations and false statements. However, as EUIPO points out, that decision of the Basic Court of Stara Pazova does not concern either the figurative element at issue or the applications for registration of the contested marks. It ruled on charges of the criminal offences of damage to business reputation and creditworthiness brought against A, an employee of the applicant, and D, a former employee of the intervener. That decision is therefore irrelevant with regard to the present proceedings.
50 Fifthly, the applicant relies on the registration in its name, in addition to the contested marks, of a Serbian trade mark, which is identical to the second contested mark, and on the decision of 16 November 2022 by which the Serbian Intellectual Property Office rejected the intervener’s application for a declaration that that Serbian trade mark was invalid.
51 In that regard, first, it must be pointed out, as observed by the intervener, that the fact that the applicant was the first to file the contested marks, inter alia in Serbia, is not relevant for the purposes of establishing its good faith. The applications for registration of the contested marks and the Serbian trade mark were filed respectively on 12 September 2019 and 11 February 2020, on the one hand, and on 13 February 2020, on the other hand, all of those dates being subsequent to the intervener’s use of the sign containing the figurative element at issue.
52 Secondly, the decision of the Serbian Intellectual Property Office, which was produced for the first time before the Court, cannot be taken into consideration. The purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 72 of Regulation 2017/1001, so it is not the Court’s function to review the facts in the light of documents produced for the first time before it (see, to that effect, judgment of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited).
53 In any event, the decision of the Serbian Intellectual Property Office is irrelevant with regard to the present proceedings. As EUIPO points out, the reason for the rejection of the application for a declaration of invalidity of the applicant’s Serbian trade mark is the fact that the intervener did not establish that it had, as it claimed, any copyright in the figurative element at issue, since there was no proof that that right had been transferred by its designer, C. It must also be pointed out that, in its decision, the Serbian Intellectual Property Office found that the applicant had not produced any conclusive evidence in support of its claim that it was behind the creation of the figurative element at issue.
54 It follows that the Board of Appeal did not make any error of assessment in finding that the applicant had neither proved that it was behind the creation of the figurative element at issue nor that it had used that figurative element as an indication of the commercial origin of its goods before the intervener and that, consequently, there was nothing in the file which was capable of casting doubt on the intervener’s description of the process by which the figurative element at issue was created.
55 It follows from all of the foregoing that the applicant is not justified in calling into question the Board of Appeal’s assessment concerning the creation of the figurative element at issue and the intervener’s use of it first.
– The similarity of the signs at issue and the knowledge of the use of the earlier sign
56 The Board of Appeal found that the applicant had knowledge of the intervener’s use of an earlier sign which was at least similar to the contested marks, because they have the same figurative element in common. It observed that the intervener had used that sign in its communication, on its website and in the invoices which it had sent to the applicant.
57 First, there is no reason to call into question the similarity, which is not disputed by the applicant, between the second contested mark and the sign used by the intervener. By contrast, the applicant submits that the first contested mark and that sign are visually different. It relies, on the one hand, on the presence of the word element ‘texo’ in the intervener’s sign and of the word elements ‘dec’, ‘flexible’ and ‘technologies’ in the first contested mark and, on the other hand, on the difference in font.
58 In that regard, it is common ground that the first contested mark and the sign used by the intervener have the same figurative element in common, which is identical as regards both its motif and colour. Furthermore, the fact that the word elements in those signs are different does not alter the similarity arising out of the coincidence in the figurative element, since those word elements are arranged in a very similar way around the figurative element in each of those signs.
59 Consequently, the applicant is not justified in claiming that the sign used by the intervener was visually different from the first contested mark.
60 Secondly, the applicant does not dispute the fact that the intervener had been using the sign reproduced in paragraph 37 above since 2015 in the invoices which it had sent to the applicant during their commercial cooperation as well as in its communication and on its website and that the applicant therefore had knowledge of the use of that sign.
– The applicant’s intention on the date on which the applications for registration of the contested marks were filed
61 The Board of Appeal pointed out that the applicant had filed, at the same time as the applications for registration of the contested marks, applications for registration of two EU trade marks, both of which included the figurative element at issue and the word element ‘texo’, a word element which had been registered since 2006 as a national Serbian trade mark in the name of the intervener. It stated that one of the two other marks also included the word element ‘tehnoexport’, namely the intervener’s company name, and the domain name ‘www.tehnoexport.rs’, which had been registered by the intervener since 2009. The Board of Appeal added that, even if the words ‘texo’ and ‘tehnoexport’ were descriptive, the applicant had not submitted any evidence justifying the commercial logic underlying the registration of those marks. Furthermore, it stated that the applicant had registered 14 domain names containing the terms ‘tehnoexport’, ‘tehnoexportflexible’, ‘tehnoexportflexibles’, ‘texoflexible’ and ‘texoflexibles’ without there being any corresponding websites. The Board of Appeal deduced from that that the intervener had submitted strong indicia showing that, by registering the contested marks, the applicant intended to prevent the intervener from marketing its goods in the European Union by using the figurative element at issue.
62 The applicant submits that the applications for registration of the contested marks were not filed speculatively or with the aim of obtaining financial compensation or in order to take advantage of the intervener’s reputation and that no objective criterion is capable of indicating that the filing of those applications was intended to cause harm. According to the applicant, that filing was legitimate as it was intended to prevent unlawful use, by the intervener, of the signs and logos which it had been using since the 1990s and which were well known. It submits that that filing took place in the context of the end of its business relationship with the intervener and of the legal actions which they brought against each other.
63 First, it must be pointed out, as observed by EUIPO, that the contested decisions are not based on the finding that the trade mark applications were filed speculatively or with the aim of obtaining financial compensation or in order to take advantage of the reputation of the intervener’s sign. Consequently, the applicant’s arguments alleging that those grounds did not underlie the filing of the applications for the contested marks are ineffective.
64 Secondly, it has been held, in paragraph 54 above, that the applicant had not proved that it had used the figurative element at issue as an indication of the commercial origin of its goods before the intervener. That finding invalidates the applicant’s line of argument that the commercial logic underlying its filing of the applications for registration of the contested marks was aimed at protecting itself against the intervener’s unlawful use of the signs and logos which it was using.
65 In that context, it must be stated that, likewise, the applicant has not produced any evidence to prove that the filing of the applications for registration of the other two EU trade marks and domain names containing the word element ‘texo’, which corresponds to the intervener’s Serbian trade mark, and/or containing its company name, namely ‘tehnoexport’, had been made with the aim of engaging fairly in competition. In that regard, it must be pointed out that the applicant does not deny that the registered domain names did not correspond to any existing website.
66 In view of all of the foregoing, it must be held that the Board of Appeal did not make any error of assessment in finding that it was apparent from the objective elements placed on the file that the applicant had filed the applications for registration of the contested marks with an aim that was inconsistent with honest practices and with the interests of the intervener.
67 Consequently, the first plea must be rejected as unfounded.
The second plea, alleging infringement of Article 96(1) of Regulation 2017/1001
68 The applicant submits that the Board of Appeal made an error of assessment in rejecting its request for oral proceedings to be organised, which included a request for A, an employee of the applicant, and D, a former employee of the intervener, to be heard in order to clarify the full significance of certain affidavits which are contradictory in terms of content and on which the Board of Appeal nevertheless relied. It claims that that resulted in an infringement of its right to be heard.
69 EUIPO and the intervener contend that the second plea is unfounded.
70 Article 96(1) of Regulation 2017/1001 provides that ‘if the Office considers that oral proceedings would be expedient they shall be held either at the instance of the Office or at the request of any party to the proceedings’.
71 It is apparent both from the wording of that provision and from the case-law that the Board of Appeal has a discretion as to whether, where a party requests that oral proceedings be organised, they are really necessary (order of 14 March 2011, Ravensburger v OHIM, C‑370/10 P, not published, EU:C:2011:149, paragraph 77, and judgment of 16 July 2014, Langguth Erben v OHIM (Shape of an alcoholic beverage bottle), T‑66/13, not published, EU:T:2014:681, paragraph 88).
72 In the present case, the Board of Appeal stated that it had all the information necessary to give a ruling and that, in its view, the content of the affidavits in the case file was not contradictory.
73 It has been held, in paragraph 42 above, that it was not apparent from the wording of the affidavit of A, an employee of the applicant, that the applicant was behind the creation of the figurative element at issue or that it was already using it in 2015. Consequently, in so far as the applicant bases the usefulness of hearing A on his affidavit being contradictory to that of C, who designed that figurative element in 2015, it must be stated that that argument must be rejected. Likewise, the fact that the emails sent by C to D, a former employee of the intervener who was, inter alia, responsible for cooperation with the applicant, do not contain the figurative element at issue, but a version of that element which was not yet final, because, at that stage, C had submitted a number of proposals for logos, cannot make C’s affidavit in any way contradictory.
74 In that context, the applicant has not shown that, in refusing to hold a hearing on the ground that it was not useful, the Board of Appeal infringed Article 96(1) of Regulation 2017/1001. The second plea must therefore be rejected as unfounded.
75 Lastly, as regards the applicant’s request for witnesses to be heard by the Court, which was submitted eight days before the hearing, it is sufficient to point out that that request must, in any event, be rejected, since the Court has, in view of all of the above considerations, been able to rule on the action on the basis of the claims, pleas in law and arguments put forward during both the written and the oral parts of the procedure.
76 As none of the pleas put forward by the applicant in support of its claims is well founded, the actions must be dismissed in their entirety.
Costs
77 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
78 Since a hearing has taken place and the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Joins Cases T‑59/23 and T‑68/23 for the purposes of the judgment;
2. Dismisses the actions;
3. Orders DEC Technologies BV to pay the costs.
Marcoulli | Tomljenović | Spangsberg Grønfeldt |
Delivered in open court in Luxembourg on 6 March 2024.
V. Di Bucci | | M. van der Woude |