JUDGMENT OF THE GENERAL COURT (Second Chamber)

13 July 2022 (*)

(EU trade mark – Invalidity proceedings – EU word mark TALIS – Absolute ground for invalidity – Bad faith – Article 52(1)(b) of Regulation (EC) No 207/2009 (now Article 59(1)(b) of Regulation (EU) 2017/1001))

In Case T‑283/21,

Edvin Pejovič, residing in Pobegi (Slovenia), represented by U. Pogačnik, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the Court, being

ETA živilska industrija d.o.o., established in Kamnik (Slovenia), represented by J. Sibinčič, lawyer,

THE GENERAL COURT (Second Chamber),

composed of V. Tomljenović, President, P. Škvařilová-Pelzl (Rapporteur) and I. Nõmm, Judges,

Registrar: E. Coulon,

having regard to the written part of the procedure,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Judgment

1        By its action under Article 263 TFEU, the applicant, Mr Edvin Pejovič, seeks the annulment and alteration of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 23 March 2021 (Case R 888/2020-4) (‘the contested decision’).

 Background to the dispute

2        On 11 July 2016, KPMS računovodske in finančne storitve, d.o.o. (‘KPMS’) filed an application for registration of an EU trade mark with EUIPO pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by 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)).

3        Registration as a trade mark was sought for the word sign TALIS.

4        The goods in respect of which registration was sought fall within Class 30 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 to the following description: ‘Vinegar’.

5        The trade mark was registered on 26 October 2016 under number 15632871.

6        On 5 January 2017, a transfer of ownership of the trade mark referred to in paragraph 3 above, from KPMS to its subsidiary, Šampionka d.o.o. (KPMS has a majority shareholding of 56.85% in Šampionka), was entered in the EUIPO register. On 3 April 2018, that mark was transferred from Šampionka to the intervener, ETA živilska industrija d.o.o.

7        On 21 August 2018, the applicant filed an application for a declaration that the mark referred to above was invalid in respect of the goods referred to in paragraph 4 above.

8        The application for a declaration of invalidity was based on the following earlier trade marks, over which the applicant had a lien, following enforcement proceedings against his debtor Beohemija d.o.o., now Stečajna masa Beohemija d.o.o. – v stečaju (assets of the bankrupt company, formerly Beohemija d.o.o., in liquidation) (separately or together, ‘Beohemija’):

–        the Slovenian word mark TALIS, registered on 24 February 1994 under number 9370337 and renewed for ‘vinegar’ in Class 30;

–        the Slovenian word mark TALIS, registered on 24 February 1999 under number 9671094 and renewed for goods in Class 32;

–        the Slovenian figurative mark reproduced below, registered on 18 April 2000 under number 9971228 and renewed for ‘vinegar’ in Class 30: