JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
22 March 2023 (*)
(EU trade mark – Invalidity proceedings – International registration designating the European Union – Word mark coinbase – 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‑366/21,
Coinbase, Inc., established in Oakland, California (United States), represented by A. Nordemann, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Markakis, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
bitFlyer Inc., established in Tokyo (Japan),
THE GENERAL COURT (Seventh Chamber),
composed of K. Kowalik-Bańczyk, President, G. Hesse and B. Ricziová (Rapporteur), 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, Coinbase, Inc., seeks annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 29 April 2021 (Case R 1751/2020-4) (‘the contested decision’).
Background to the dispute
2 On 3 February 2016, bitFlyer Inc. (‘the proprietor of the contested mark’) obtained from the International Bureau of the World Intellectual Property Organization (WIPO) the international registration designating the European Union, with a priority date of 18 December 2015, under number 1 308 248, for the word mark coinbase.
3 The international registration of the word mark coinbase (‘the contested mark’) was sent to EUIPO on 8 September 2016 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, and accepted on 9 February 2017.
4 The goods and services in respect of which protection in the European Union of the word mark coinbase was granted are in Classes 9, 35, 36, 38 and 42 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.
5 On 29 June 2018, the applicant filed with EUIPO pursuant to Article 63 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) an application for a declaration of invalidity against the contested mark covering all of the goods and services in respect of which protection had been granted.
6 The grounds for invalidity relied on by the applicant were those referred to in Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) of that regulation, and Article 59(1)(b) of that regulation.
7 More specifically, the relative ground for invalidity relied upon by the applicant was based, inter alia, on the international registration designating the European Union of the word mark COINBASE, obtained on 4 June 2014, with a priority date of 6 December 2013, under number 1 216 587, (‘the earlier mark’) and which had received protection in the European Union on 20 July 2015, in respect of various goods and services falling within Classes 9, 36 and 42, corresponding, for each of those classes, to the following description:
– Class 9: ‘Downloadable computer software for use in electronically trading, storing, sending, receiving, accepting, and transmitting digital currency, and managing digital currency payment and exchange transactions’;
– Class 36: ‘Currency exchange services; on-line real-time currency trading; cash management, namely, facilitating transfers of electronic cash equivalents; digital currency exchange transaction services for transferrable electronic cash equivalent units having a specified cash value’;
– Class 42: ‘Providing temporary use of online non-downloadable software for use in electronically trading, storing, sending, receiving, accepting and transmitting digital currency, and managing digital currency payment and exchange transactions’.
8 By decision of 26 June 2020, the Cancellation Division upheld the application for a declaration of invalidity in part, in so far as it was based on Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) of that regulation, on the ground that there was a likelihood of confusion for all the identical or similar goods and services covered by the marks at issue, given that those marks were identical.
9 The goods and services regarded as identical or similar by the Cancellation Division (‘the similar goods and services’) are in Classes 9, 36, 38 and 42 and correspond, for each of those classes, to the following description:
– Class 9: ‘Cash registers; coin counting or sorting machines; game programs for arcade video game machines; game programs for home video game machines; electronic circuits and CD-ROMs recorded with programs for hand-held games with liquid crystal displays; downloadable image files; downloadable electronic publications; all aforementioned not in the field of telecommunication’;
– Class 36: ‘Financial assessment of company credit; rental of paper money and coin counting or processing machines; rental of cash dispensers; rental of automated-teller machines; consigned collection of payment for goods; agencies for commodity futures trading; life insurance brokerage; life insurance underwriting; agencies for non-life insurance; claim adjustment for non-life insurance; non-life insurance underwriting; insurance premium rate computing’;
– Class 38: ‘Giving time to access computer databases where users can search and obtain information concerning electronic commerce transactions’;
– Class 42: ‘Technological advice relating to computers; online authentication of user identification toward the third party in electronic commerce transactions; designing, programming, or doing maintenance of computer programs for use in electronic commerce transactions; providing search engines for electronic commerce transactions; authenticating users of electronic commerce transactions via communication lines; designing, programming, or doing maintenance of computer programs (software) for authenticating users in electronic commerce transactions; designing, programming, or doing maintenance of Internet websites for electronic commerce transactions; all aforementioned not in the field of telecommunication’.
10 The contested mark was therefore declared invalid as regards the similar goods and services.
11 However, the Cancellation Division rejected the application for a declaration of invalidity in respect of the goods and services designated by the contested mark which were dissimilar to the goods and services designated by the earlier mark, in so far as it was based on Article 60(1)(a), read in conjunction with Article 8(1)(b), of Regulation 2017/1001, and also in so far as it was based on Article 59(1)(b) of Regulation 2017/1001, on the ground of bad faith.
12 The goods and services regarded as dissimilar by the Cancellation Division (‘the dissimilar goods and services’) are in Classes 9, 35, 36, 38 and 42 and correspond, for each of these classes, to the following description:
– Class 9: ‘Ear plugs for swimmers; ear plugs for divers; ozonisers [ozonators]; electrolysers [electrolytic cells]; egg-candlers; blueprint apparatus; electric sign boards for displaying target figures, current outputs or the like; photo-copying machines; mathematical instruments; time and date stamping machines; time clocks [time recording devices]; punched card office machines; voting machines, postage stamp checking apparatus; mechanisms for coin-operated car parking gates; life-saving apparatus and equipment; fire extinguishers; fireplugs; fire hoses; fire hose nozzles; sprinkler systems for fire protection; fire alarms; gas alarms; anti-theft warning apparatus; protective helmets; railway signal apparatus, luminous or mechanical; vehicle breakdown warning triangles; luminous or mechanical road signs; divers’ apparatus for life saving purpose; simulators for the steering and control of vehicles; sports training simulators; laboratory apparatus and instruments; photographic machines and apparatus; cinematographic machines and apparatus; optical machines and apparatus; measuring or testing machines and instruments; power distribution or control machines and apparatus; rotary converters; phase modifiers; solar batteries; batteries and cells; electric or magnetic meters and testers; electric wires and cables; Geiger counters; cyclotrons [not for medical purposes]; industrial X-ray machines and apparatus [not for medical use]; industrial betatrons [not for medical use]; magnetic prospecting machines; magnetic object detectors; seismic exploration machines and apparatus; hydrophone machines and apparatus; echo sounders; ultrasonic flaw detectors; ultrasonic sensors; electronic door closing control systems; electron microscopes; magnetic cores; resistance wires; electrodes, other than welding electrodes or medical electrodes; fire boats; satellites for scientific purposes; fire engines; dust masks; gas masks; welding masks; fireproof garments; disaster prevention hoods; gloves for protection against accidents; spectacles [eyeglasses and goggles]; protective helmets for sports; weight belts [for scuba diving]; air tanks [for scuba diving]; regulators [for scuba diving]; metronomes; electronic circuits and CD-ROMs recorded with automatic performance programs for electronic musical instruments; effecters for electric or electronic musical instruments; phonograph records; downloadable music files; recorded video discs and video tapes; exposed cinematographic films; exposed slide films; slide film mounts; all aforementioned not in the field of telecommunication’;
– Class 35: ‘Promoting the goods and services of others through the administration of sales and promotional incentive schemes involving trading stamps; business management analysis or business consultancy; business management of hotels; preparation of financial statements; employment agencies; auctioneering; import-export agencies; arranging newspaper subscriptions; shorthand services; transcription; document reproduction; office functions, namely filing, in particular documents or magnetic tape; compilation of information into computer databases; providing business assistance to others in the operation of data processing apparatus namely, computers, typewriters, telex machines and other similar office machines; reception services for visitors in buildings; publicity material rental; rental of typewriters, copying machines and word processors; providing employment information; news clipping services; rental of vending machines; retail services or wholesale services for liquor; retail services or wholesale services for meat; retail services or wholesale services for sea food; retail services or wholesale services for vegetables and fruits; retail services or wholesale services for confectionery, bread and buns; retail services or wholesale services for rice and cereals; retail services or wholesale services for milk; retail services or wholesale services for carbonated drinks [refreshing beverages] and nonalcoholic fruit juice beverages; retail services or wholesale services for tea, coffee and cocoa; retail services or wholesale services for processed food; advertising and publicity services; marketing research or analysis; providing information concerning commercial sales (which includes information provision via the Internet); providing information concerning advertisement and publicity services (which includes information provision via the Internet); intermediary services on sale and purchase contracts for goods in electronic commerce transactions; business operation and management concerning electronic commerce transactions; systematization of information into computer databases; retail services or wholesale services for clothing; retail services or wholesale services for diapers; retail services or wholesale services for footwear; retail services or wholesale services for bags and pouches; retail services or wholesale services for woven fabrics and beddings; retail services or wholesale services for personal articles in the nature of trinkets or jewelry for personal use; retail services or wholesale services for foods and beverages; retail services or wholesale services for automobiles; retail services or wholesale services for two-wheeled motor vehicles; retail services or wholesale services for bicycles; retail services or wholesale services for furniture; retail services or wholesale services for joinery fittings; retail services or wholesale services for tatami mats; retail services or wholesale services for ritual equipment; retail services or wholesale services for bladed or pointed hand tools, hand tools, and hardware; retail services or wholesale services for kitchen equipment, cleaning tools, and washing utensils; retail services or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; retail services or wholesale services for cosmetics, toiletries, dentifrices, soaps and detergents; retail services or wholesale services for agricultural machines, implements and supplies; retail services or wholesale services for natural flowers and trees; retail services or wholesale services for fuel; retail services or wholesale services for printed matter; retail services or wholesale services for paper and stationery; retail services or wholesale services for sports goods; retail services or wholesale services for toys, dolls, game machines and apparatus; retail services or wholesale services for musical instruments and records; retail services or wholesale services for photographic machines and apparatus and photographic supplies; retail services or wholesale services for clocks, watches, and spectacles; retail services or wholesale services for tobaccos and smokers’ articles; retail services or wholesale services for building materials; retail services or wholesale services for semi-wrought precious stones and their imitations; retail services or wholesale services for pet animals’;
– Class 36: ‘Management of buildings; agency services for the leasing or rental of buildings; leasing or renting of buildings; purchase and sale of buildings; agency services for the purchase or sale of buildings; real estate appraisal; land management; agency services for the leasing or rental of land; leasing of land; purchase and sale of land; agency services for the purchase or sales of land; providing information on buildings or land [real estate affairs]; antique appraisal; art appraisal; precious stone appraisal; used automobiles appraisal; agencies for collecting gas or electric power utility payments; charitable fund raising’;
– Class 38: ‘News agencies’;
– Class 42: ‘Providing meteorological information; architectural design; surveying; geological surveys or research; designing of machines, apparatus, instruments [including their parts] or systems composed of such machines, apparatus and instruments; designing; technological advice relating to automobiles and industrial machines; testing, inspection or research of pharmaceuticals, cosmetics or foodstuffs; research on building construction or city planning; testing or research on prevention of pollution; testing or research on electricity; testing or research on civil engineering; testing, inspection or research on agriculture, livestock breeding or fisheries; testing or research on machines, apparatus and instruments; rental of measuring apparatus; rental of laboratory apparatus and instruments; rental of drawing instruments; all aforementioned not in the field of telecommunication’.
13 The contested mark therefore remained valid in the European Union in respect of the dissimilar goods and services.
14 On 26 August 2020, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Cancellation Division. It claimed that the decision of the Cancellation Division should be annulled in so far as it had rejected the application for a declaration of invalidity, namely in respect of the dissimilar goods and services. The applicant argued that the Cancellation Division had erred in its conclusion that there was no bad faith, within the meaning of Article 59(1)(b) of Regulation 2017/1001, on the part of the proprietor of the contested mark.
15 By the contested decision, the Fourth Board of Appeal of EUIPO dismissed the appeal.
16 Regarding the subject matter of the dispute, it noted that the scope of the appeal was limited to whether there was bad faith, within the meaning of Article 59(1)(b) of Regulation 2017/1001, in respect of dissimilar goods and services for which the registration of the contested mark had not been declared invalid by the Cancellation Division. At the same time, the Board of Appeal noted that the cancellation of the contested mark in respect of the similar goods and services had become final.
17 Regarding the merits, the Board of Appeal found that the appeal was unfounded and that, therefore, the proprietor of the contested mark for the dissimilar goods and services did not act in bad faith. It found that there was no evidence to establish that the proprietor of the contested mark had acted in bad faith.
Forms of order sought
18 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
19 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
Determination of the applicable regulation ratione temporis
20 Given the date on which the application for registration at issue was filed, namely 3 February 2016 (see, to that effect, judgment of 8 September 2021, SBG v EUIPO – VF International (GEØGRAPHICAL NØRWAY), T‑458/20, not published, EU:T:2021:543, paragraph 13 and the case-law cited), which is determinative for the purposes of identifying the applicable substantive law, the facts of the present case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited). Moreover, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited; judgment of 1 September 2021, Gruppe Nymphenburg Consult v EUIPO (Limbic® Types), T‑96/20, EU:T:2021:527, paragraph 17).
21 Consequently, in the present case, as regards the substantive rules, the references made by the Board of Appeal in the contested decision and by the parties in their submissions to Article 8(1)(b), Article 59(1)(b) and Article 60(1)(a) of Regulation 2017/1001 must be understood as referring, respectively, to Article 8(1)(b), Article 52(1)(b) and Article 53(1)(a) of Regulation No 207/2009, which are identical in content.
Substance
22 In support of its action the applicant raises a single plea in law, alleging infringement of Article 52(1)(b) of Regulation No 207/2009.
23 That plea is divided, in essence, into two complaints. First, the applicant claims that the Board of Appeal carried out too strict an assessment of bad faith by looking at the issue only in relation to the dissimilar goods and services. Second, the applicant submits that the Board of Appeal erroneously concluded that the proprietor of the contested mark did not act in bad faith at the time of filing the application for registration.
24 It is appropriate to begin by examining the argument that the assessment of bad faith was too narrow.
25 In that connection, the applicant claims that the Board of Appeal defined the scope of the concept of ‘bad faith’ within the meaning of Article 52(1)(b) of Regulation No 207/2009 too narrowly. It did not carry out an overall assessment, taking into account all the factual circumstances relevant to the particular case, in so far as its assessment of bad faith focused only on the dissimilar products and services without taking into account the similar products and services.
26 According to the applicant, the Board of Appeal should have assessed bad faith by taking into account the situation on the day the application for registration was filed, namely 3 February 2016, and not on the day it issued its decision, irrespective of whether the contested mark had already been finally invalidated in respect of the similar goods and services by the decision of the Cancellation Division.
27 Furthermore, the applicant claims, in essence, that the intention of the proprietor of the contested mark cannot be split into the similar goods and services, in respect of which it had bad intentions when filing the application for registration, and the dissimilar goods and services, in respect of which it had good intentions. According to the applicant, bad intentions should affect all the goods and services applied for.
28 EUIPO disputes the applicant’s arguments.
29 In that connection, EUIPO submits that the decision of the Cancellation Division has already become final in part, with respect to the similar goods and services, and that, to that extent, the annulment of the registration of the contested mark has become final. EUIPO submits that, in the context of its partial appeal, the applicant asked the Board of Appeal to set aside the decision of the Cancellation Division only for the dissimilar goods and services. EUIPO therefore concludes that the similar goods and services were clearly outside the scope of the appeal brought for examination before the Board of Appeal and that the Board of Appeal thus correctly delimited the scope of the appeal proceedings before it.
30 Moreover, EUIPO observes, in essence, that although, in the contested decision, the Board of Appeal referred several times to the similar goods and services, despite the fact that they were outside the scope of the appeal, those references were only responses to the applicant’s arguments in order to satisfy its obligation to state reasons and do not constitute contradictory reasoning, or a decision rendered ultra vires or even ultra petita.
31 In that connection, it should first be recalled that, under Article 198(2) of Regulation 2017/1001, an application for a declaration of invalidity of the effects of an international registration designating the European Union is to take the place of an application for a declaration of invalidity under Articles 59 or 60 of that regulation (formerly Articles 52 or 53 of Regulation No 207/2009).
32 It must also be borne in mind that, under Article 52(1)(b) of Regulation No 207/2009, 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 it filed the application for the trade mark.
33 It follows from Article 52(1)(b) of Regulation No 207/2009 that the relevant time for determining whether there was bad faith on the part of the applicant for registration is the time of filing the application for registration (judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli, C‑529/07, EU:C:2009:361, paragraph 35).
34 Furthermore, in order to determine whether the applicant is acting in bad faith, all the relevant factors specific to the particular case which pertained at the time of filing the application for registration of the sign as an EU trade mark must be taken into consideration, in particular: (i) the fact that the applicant knows or must know that a third party is using, in at least one Member State, an identical or similar sign for an identical or similar product capable of being confused with the sign for which registration is sought; (ii) the applicant’s intention to prevent that third party from continuing to use such a sign; and, (iii) the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought (judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli, C‑529/07, EU:C:2009:361, paragraph 53).
35 However, it is apparent from the wording used by the Court of Justice in the judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli (C‑529/07, EU:C:2009:361), that the factors listed are merely examples drawn from a number of factors which may be taken into account in order to decide whether the applicant for registration of a sign as an EU trade mark was acting in bad faith at the time of filing the application for the mark. In that regard, it should be noted that, in the context of the overall analysis undertaken pursuant to Article 52(1)(b) of Regulation No 207/2009, account may also be taken of the origin of the 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 judgment of 16 December 2020, Pareto Trading v EUIPO – Bikor and Bikor Professional Color Cosmetics Małgorzata Wedekind (BIKOR EGYPTIAN EARTH), T‑438/18, not published, EU:T:2020:630, paragraph 21 and the case-law cited).
36 Having regard to the foregoing considerations and in the light of the applicant’s arguments, it is necessary to assess whether the Board of Appeal correctly took into consideration all the relevant factors specific to the particular case which pertained at the time of filing the application for registration by the proprietor of the contested mark.
37 It must be borne in mind that the Board of Appeal considered, in essence, in paragraph 14 of the contested decision, that the scope of the appeal was limited to whether the proprietor of the contested mark acted in bad faith in relation to the dissimilar goods and services in respect of which the mark remained valid. That definition of the scope of the dispute was in line with the applicant’s appeal before the Board of Appeal, which sought the annulment of the decision of the Cancellation Division only in so far as it had rejected the application for a declaration of invalidity, namely for the dissimilar goods and services.
38 However, even if the scope of the appeal before the Board of Appeal was limited to the dissimilar products and services, in order to take into consideration all the relevant factors specific to the particular case when assessing bad faith, in accordance with the case-law referred to above, the Board of Appeal should nevertheless have taken into consideration the similar products and services. Those goods and services formed part of those referred to by the proprietor of the contested mark at the time of filing its application for registration. Therefore, the assessment of bad faith by the Board of Appeal should have also covered the similar goods and services and the evidence relating to them.
39 However, an overall analysis of the contested decision shows that the Board of Appeal did not meet this requirement.
40 It is apparent from several paragraphs in the contested decision that the assessment of bad faith by the Board of Appeal concerned only the dissimilar goods and services, when it should also have taken into consideration the similar goods and services in an assessment of all the relevant factors.
41 First, in paragraph 35 of the contested decision, concerning the degree of legal protection enjoyed by the applicant’s sign, the Board of Appeal noted that ‘only goods and services [counted] in this assessment for which the cancellation request [had been] rejected, which [were] all clearly dissimilar’.
42 Second, in paragraph 38 of the contested decision, the Board of Appeal found that there was no evidence in the file for a finding, with regard to the dissimilar goods and services that were the subject of the appeal, that the proprietor of the contested mark had dishonest intentions and had dishonestly attempted to block legitimate use of that mark by a competitor.
43 Third, in paragraph 45 of the contested decision, it is very clear that the Board of Appeal referred only to the dissimilar goods and services. That is evidenced expressly by that paragraph, which refers to ‘the basic principle that the grounds for declaration of invalidity have to be assessed with regard to the goods and services which are subject of the appeal proceedings’, namely the dissimilar goods and services in the present case.
44 Even if the analysis of bad faith in the contested decision does contain certain elements potentially referring to the similar goods and services, that is not sufficient to conclude that the Board of Appeal correctly took those goods and services into consideration in its assessment of bad faith, in accordance with the principles flowing from the case-law cited in paragraphs 33 to 35 above.
45 Accordingly, first, although paragraphs 31 to 34 of the contested decision, relating to the knowledge of the proprietor of the contested mark of the use of the earlier mark and of the proprietor’s intention to prevent the applicant from using the sign in question, imply that the Board of Appeal’s analysis could relate to the similar goods and services and to the dissimilar goods and services, the finding of that part of the Board of Appeal’s assessment in paragraph 38 of the contested decision relates only to the dissimilar goods and services.
46 Second, although the Board of Appeal also referred to the similar goods and services in paragraph 36 of the contested decision, relating to the assessment of the degree of legal protection enjoyed by the applicant’s sign, it was merely an optional addition to the assessment of that criterion in paragraph 35 of the contested decision, which relates only to the dissimilar goods and services (see, in that regard, paragraph 41 above).
47 Third, it should be noted that the second part of the Board of Appeal’s assessment relating to fraudulent intent of the proprietor of the contested mark, in paragraphs 39 and 40 of the contested decision, does not refer to any goods or services and it is, therefore, not possible to know whether those findings concerned the similar goods and services.
48 Fourth, with regard to the third part of the Board of Appeal’s assessment relating to other types of potentially abusive conduct of the proprietor of the contested mark, it should be noted that paragraphs 44, 46 and 47 of the contested decision manifestly lack clarity as to the goods and services which the Board of Appeal took into consideration in its analysis.
49 Furthermore, the Board of Appeal observed, in essence, in paragraph 46 of the contested decision that the most relevant argument in favour of the applicant was that, where a finding of bad faith is made in respect of some goods or services according to the criteria of the judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli (C‑529/07, EU:C:2009:361), generally, the trade mark should be cancelled for all the goods and services in question. However, the Board of Appeal’s findings on those criteria can be found in paragraph 38 of the contested decision, which concerns only the dissimilar goods and services. Furthermore, paragraph 46 of the contested decision must be read in the light of the content of the previous paragraph of that decision, analysed in paragraph 43 above, which refers only to the dissimilar products and services.
50 In that respect, it should also be pointed out that, in paragraph 14 of the contested decision, the Board of Appeal noted that the scope of the appeal was limited to whether the proprietor of the contested mark which had filed the application for international registration in respect of the dissimilar goods and services had acted in bad faith, and that, even though the decision of the Cancellation Division had not stated expressly that bad faith had to be examined only in respect of those goods and services, the Board of Appeal chose indirectly to proceed on that basis.
51 It follows that the Board of Appeal did not properly include the similar products and services in its assessment of bad faith.
52 That finding is also supported by the arguments put forward by EUIPO in the proceedings before the Court. Recalling that the Board of Appeal had correctly delimited the scope of the proceedings by excluding the similar goods and services, EUIPO maintains in its response that the references to the similar goods and services made in the contested decision were merely intended to satisfy its obligation to state reasons in order to rebut the applicant’s arguments. As a result, the Board of Appeal did not seek to carry out an assessment in relation to the similar goods and services in the same way as it did in relation to the dissimilar goods and services.
53 It follows from the foregoing that the Board of Appeal did not properly take into consideration, in the context of the overall assessment of bad faith, all the relevant factors specific to the particular case which pertained at the time of filing the application for registration, as required by the case-law cited in paragraphs 33 to 35 above. The assessment carried out in the contested decision is therefore vitiated by an error in that regard.
54 Finally, it must be held that it is not for the Court to examine that question, for the first time, in the context of its review of the legality of the contested decision. It will therefore be for the Board of Appeal to rule in this respect, giving reasons for its assessment, for the purposes of the decision which it is required to give on the appeal still pending before it (see, to that effect, judgment of 8 March 2017, Biernacka-Hoba v EUIPO – Formata Bogusław Hoba (Formata), T‑23/16, not published, EU:T:2017:149, paragraph 59 and the case-law cited, and order of 16 June 2021, Sony Interactive Entertainment Europe v EUIPO – Huawei Technologies (GT10), T‑558/20, not published, EU:T:2021:381, paragraph 44 and the case-law cited).
55 It follows that the applicant’s single plea in law must be upheld and that the contested decision must be annulled, without there being any need to rule on the applicant’s other arguments.
Costs
56 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since EUIPO has been unsuccessful, it must be ordered to pay the costs in accordance with the form of order sought by the applicant.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1. Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 29 April 2021 (Case R 1751/2020-4);
2. Orders EUIPO to pay the costs.
Kowalik-Bańczyk | Hesse | Ricziová |
Delivered in open court in Luxembourg on 22 March 2023.
E. Coulon | | M. van der Woude |