JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
8 May 2014 (*)
(Community trade mark — Invalidity proceedings — Community word mark Simca — Bad faith — Article 52(1)(b) of Regulation (EC) No 207/2009)
In Case T‑327/12,
Simca Europe Ltd, established in Birmingham (United Kingdom), represented by N. Haberkamm, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Schifko, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
GIE PSA Peugeot Citroën, established in Paris (France), represented by P. Kotsch, lawyer,
ACTION brought against the decision of the First Board of Appeal of OHIM of 12 April 2012 (Case R 645/2011-1), relating to invalidity proceedings between GIE PSA Peugeot Citroën and Simca Europe Ltd,
THE GENERAL COURT (Fifth Chamber),
composed of A. Dittrich, President, J. Schwarcz (Rapporteur) and V. Tomljenović, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 16 July 2012,
having regard to the response of OHIM lodged at the Court Registry on 20 November 2012,
having regard to the response of the intervener lodged at the Court Registry on 9 November 2012,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur and pursuant to Article 135a of the Rules of Procedure of the Court, to give a ruling without an oral procedure,
gives the following
Judgment
Background to the dispute
1 On 5 December 2007, Mr Joachim Wöhler (‘the former proprietor’) filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The mark for which registration was sought is the word sign Simca (or ‘the mark at issue’).
3 The goods in respect of which registration was sought fall within Class 12 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 (‘the Nice Agreement’), and correspond to the following description: ‘Vehicles; apparatus for locomotion by land, air or water.’
4 The trade mark application was published in Community Trade Marks Bulletin No 16/2008 of 21 April 2008 and the word sign Simca was registered as a Community trade mark on 18 September 2008 under No 6489371 for all the goods listed in paragraph 3 above.
5 On 29 September 2008, the intervener — GIE PSA Peugeot Citroën — applied, in accordance with Article 51(1)(b) of Regulation No 40/94 (now Article 52(1)(b) of Regulation No 207/2009), for a declaration that that Community trade mark was invalid in respect of all the goods for which it had been registered. In essence, the intervener alleged that the former proprietor had been acting in bad faith at the time when he filed the application for registration of the mark at issue. His sole objective in making that application was to prevent the use of the name ‘simca’ in order to market the goods covered by the application for registration, even though the intervener had rights over that name which were prior to the application. In that regard, the intervener referred, inter alia, to the fact that it was the holder of an international mark SIMCA, registered under No 218957 and protected since 1959, inter alia in Germany, Spain, Austria and the Benelux, in particular for ‘vehicles; apparatus for locomotion by land, air or water’ in Class 12 of the Nice Agreement, and of the French mark SIMCA, registered under No 1606604 since 1990, inter alia for ‘motor vehicles’ (véhicules automobiles) in the same class. The intervener claimed that, although those marks had no longer been used in recent years, its rights to the mark had been maintained. The intervener noted that the ‘known’ motor vehicle mark SIMCA had been created by a French motor manufacturer as early as 1934. The earlier French mark was requested for the first time in 1935 and was taken over in 1978 by Automobiles Peugeot, SA, which used it intensively throughout the world, including in Europe. The intervener further maintained that, in 2008, it had twice requested the former proprietor of the mark to surrender the mark at issue. In response, the former proprietor had attempted to ‘blackmail’ the intervener into offering him financial compensation. According to the intervener, the trade mark application had been made by the former proprietor in order to improve his financial situation through extortion, without there being any genuine desire on his part to use the mark. Given also that the contractual relationship between the parties had ended shortly before the Community trade mark application at issue was filed, the intervener submitted that it was merely a ‘speculative mark’ or a ‘blocking mark’.
6 By decision of 25 January 2011, the OHIM Cancellation Division rejected in its entirety the application for a declaration of invalidity.
7 On 24 March 2011, the intervener brought an appeal against that decision.
8 On 29 April 2011, the applicant — Simca Europe Ltd — was entered in OHIM’s register as the new proprietor of the mark at issue.
9 By decision of 12 April 2012 (‘the contested decision’), the First Board of Appeal of OHIM upheld the intervener’s appeal, annulled the Cancellation Division’s decision and, lastly, declared the mark at issue to be invalid. The grounds relied on by the Board of Appeal were divided into three parts, relating respectively to: (i) preliminary observations; (ii) ‘undisputed’ facts; and (iii) the very existence of bad faith on the part of the former proprietor at the time when the trade mark application was filed.
10 In the first place, as regards the preliminary observations, the Board of Appeal found that the applicant, as the new proprietor of the mark at issue, ‘had to accept direct liability for the conduct’ of the former proprietor, as the initial applicant for that mark.
11 The Board of Appeal also categorised as irrelevant a reference made by the applicant to a judgment of the Bundesgerichtshof (Federal Court of Justice, Germany) concerning the German mark SIMCA. The Board of Appeal noted in that regard that the Community trade mark scheme is an autonomous system with its own set of objectives and rules peculiar to it, and it applies independently of any national system. In addition, the Board of Appeal stated that it was unaware of the evidence lodged in the parallel proceedings in Germany and, accordingly, the abovementioned judgment could not have the authority of precedent.
12 In the second place, as regards the ‘undisputed’ factors, of decisive importance — according to the Board of Appeal — for the assessment of the facts in the present case, the Board of Appeal first noted that motor vehicles covered by the SIMCA mark have been sold since the 1930s and that the intervener or an undertaking belonging to its group had taken over that mark in 1978. The Board of Appeal also emphasised that the intervener was the proprietor of two figurative marks, one of which — the national mark registered under No 121992 — was protected in France and the other — the international mark registered under No 218957 — in the Czech Republic, Germany, Spain, Italy, Hungary, Malta, Portugal, Romania and the Benelux, as well as in some countries which are not members of the European Union. According to the Board of Appeal, those marks were still registered when the contested decision was adopted, at least for Automobiles Peugeot vehicles in Class 12, Automobiles Peugeot being a member of the intervener’s group.
13 Secondly, according to the Board of Appeal, although the intervener had ceased to market vehicles under the SIMCA mark at the end of the 1970s, that mark enjoyed a wide reputation, which, although it may have diminished over time, still existed when the contested decision was adopted.
14 Thirdly, the Board of Appeal noted that, for over 18 months, the former proprietor had worked for the intervener as an independent entrepreneur in the software field in Cologne (Germany) and, subsequently, in Bremen (Germany). According to the Board of Appeal, he knew the history of the SIMCA mark, as could be seen from some of his letters to the intervener.
15 Fourthly, the Board of Appeal stated that, even before registration of the mark at issue was applied for, the former proprietor was already in contact with an Indian company in order to study a development project for a motor vehicle. However, that project had not yet been implemented when the contested decision was adopted. The Board of Appeal noted in that regard that the former proprietor’s letters show that he was searching for a mark ‘which was no longer used or which had not been registered’.
16 Fifthly, the Board of Appeal stated that, in August 2008, the former proprietor was also the proprietor of the Internet website www.simca.info and that he had been marketing electric bicycles by means of that website since December 2008.
17 Lastly, the Board of Appeal stated that, although the former proprietor knew the intervener’s rights with respect to the mark at issue, he assumed that they were liable to be annulled owing to lack of genuine use. He was willing to surrender the mark at issue, however, if an ‘offer of compensation’ was made to him.
18 In the third place, as regards the very existence of bad faith on the part of the former proprietor, the Board of Appeal found, in essence, that the burden of proof in that regard lay with the intervener, as the applicant for a declaration of invalidity. In its view, it was appropriate to rely on a number of indices forming a trail of clues, so that it could be stated, with a probability approaching certainty, that the applicant for a Community trade mark had acted in bad faith.
19 According to the Board of Appeal, the concept of ‘bad faith’, referred to in Article 52(1)(b) of Regulation No 207/2009, is not defined, delimited or even described in any way in the legislation. Although the Court drew up a list of criteria concerning the interpretation of that concept in Case C‑529/07 Chocoladefabriken Lindt & Sprüngli [2009] ECR I‑4893, those criteria are not, according to the Board of Appeal, exhaustive. Since the facts of the proceedings which gave rise to the question referred for a preliminary ruling in Case C‑529/07 differ substantially, according to the Board of Appeal, from the facts underlying the proceedings in the present case, it considers it necessary to draw up additional criteria.
20 According to the Board of Appeal, the fact that the former proprietor knew of the existence of the earlier marks and nevertheless filed an application for a Community trade mark is evidence of his ‘intention to obstruct’ and his bad faith. The fact that he had assumed that those marks were liable to be declared invalid is, in the view of the Board of Appeal, irrelevant and constitutes merely a pretext, since, at the time when the contested decision was adopted, he had not yet applied for revocation of the earlier French mark or the earlier international mark.
21 The Board of Appeal stated that the former proprietor was also aware that the SIMCA mark enjoyed a reputation in relation to motor vehicles. According to the Board of Appeal, it is apparent from the evidence that the former proprietor was seeking a known mark, his objective being to free-ride on the reputation of the intervener’s registered marks and to take advantage of the good reputation of those marks through the deliberate unlawful use of the sign Simca. Such conduct has to be considered, in the view of the Board of Appeal, to be a reflection of bad faith.
22 Consequently, the Board of Appeal found it to be irrelevant that the former proprietor had been marketing bicycles under the mark Simca since December 2008, as such marketing does not justify registration of the mark at issue.
Forms of order sought
23 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs, including the ‘costs of representation’.
24 OHIM and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
Documents presented for the first time before the Court
25 Examination of OHIM’s file discloses that the documents appended as Annexes K.8, K.9 and K.10 to the application had not been produced before it during the administrative proceedings. Those documents consist of the following: (i) in Annex K.8, a letter dated 16 March 2012 from the applicant to the intervener requiring it to relinquish use of the German word mark SIMCA, registered for the intervener under No 302008037708; (ii) in Annex K.9, a declaration of surrender by the intervener, dated 23 March 2012 and relating to that mark, and a letter from the intervener to the Deutsches Patent- und Markenamt (German Patent and Trade Mark Office), informing the authority that it has surrendered the mark; and (iii) in Annex K.10, an extract from the German trade marks register, dated 16 July 2012, from which it is apparent that the German trade mark referred to above has been annulled.
26 In that regard, it should be noted that the purpose of bringing an action before the General Court is to secure review of the legality of the decisions of the Boards of Appeal of OHIM for the purposes of Article 65 of Regulation No 207/2009 and that, in proceedings for annulment, the legality of the contested measure must be assessed on the basis of the elements of fact and of law existing at the time when the measure was adopted. Consequently, according to settled case-law, the role of the Court is not to re-evaluate the factual circumstances in the light of evidence adduced for the first time before it. To admit such evidence would be contrary to Article 135(4) of the Rules of Procedure of the General Court, which states that the parties’ pleadings may not change the subject-matter of the proceedings before the Board of Appeal (see Case T‑227/09 Feng Shen Technology v OHIM — Majtczak (FS) [2012] ECR, paragraph 25 and the case-law cited).
27 It follows that the documents produced by the applicant for the first time before the General Court, in Annexes K.8, K.9 and K.10 to the application, cannot be taken into consideration and must therefore be disregarded.
Admissibility of the general reference made by the applicant to the arguments put forward before OHIM
28 As regards the arguments, submitted during the procedure before OHIM, to which the applicant makes a general reference in point 67 of its application initiating proceedings, it should be borne in mind that, under Article 44(1) of the Rules of Procedure, the application must contain a summary of the pleas in law on which it is based. That summary must be sufficiently clear and precise to enable the defendant to prepare its defence and the General Court to rule on the action, if necessary without any other supporting information (see, to that effect, judgment of 18 September 2012 in Case T‑460/11 Scandic Distilleries v OHIM — Bürgerbräu, Röhm & Söhne (BÜRGER), not published in the ECR, paragraph16 and the case-law cited).
29 It should also be borne in mind that, whilst the body of the application may be supported and supplemented on specific points by references to extracts from documents annexed thereto, a general reference to other documents, even those annexed to the application, cannot make up for the absence of the essential arguments in law which, in accordance with Article 44(1) of the Rules of Procedure, must appear in the application (see, to that effect, BÜRGER, paragraph 28 above, paragraph 17 and the case-law cited).
30 In the present case, the applicant merely stated, in paragraph 67 of the application, that it referred to ‘the entirety of the arguments relied upon … before OHIM in its statement of 2 August 2011 and to the documents annexed thereto’ and that ‘the documents concerned [were] expressly identified as additional content of the application and, as such, integral to the subject-matter of the action’.
31 The applicant has thus failed to identify either the specific points in its application which it wishes to supplement by means of that reference or the annexes in which those arguments might be set out.
32 Accordingly, the Court is not required to search through all those pleadings submitted to OHIM, to find the arguments to which the applicant might be referring, or to examine them, since those arguments are inadmissible. On the other hand, from among the pleadings submitted during the administrative procedure before OHIM, the Court will examine those to which reference is made in specific and sufficiently fact-based arguments in the application.
The application for annulment of the contested decision
33 The applicant relies on a single plea in support of its action, alleging infringement of Article 52 of Regulation No 207/2009. According to the applicant, in essence, the Board of Appeal erred in law in finding that the former proprietor had acted in bad faith when he filed an application with OHIM for registration of the mark at issue as a Community trade mark.
34 OHIM and the intervener dispute the applicant’s arguments.
35 First of all, it should be borne in mind that, in accordance with Article 52(1)(b) of Regulation No 207/2009, following an application to OHIM or on the basis of a counterclaim in infringement proceedings, a Community trade mark is to be declared invalid where the applicant was acting in bad faith when it filed the application for the trade mark. Where the applicant for a declaration of invalidity seeks to rely on that ground, it is for that party to prove the circumstances which substantiate a finding that the Community trade mark proprietor had been acting in bad faith when it filed the application for registration of that mark (Case T‑33/11 Peeters Landbouwmachines v OHIM — Fors MW (BIGAB) [2012] ECR, paragraph 17).
36 As the Board of Appeal correctly states in paragraph 34 et seq. of the contested decision, the Court of Justice has provided some clarification regarding the way in which the concept of bad faith, as referred to in Article 52(1)(b) of Regulation No 207/2009, should be interpreted (Chocoladefabriken Lindt & Sprüngli, paragraph 19 above, paragraph 37 et seq.). Thus, the Court found that the question whether the applicant for registration of a trade mark was acting in bad faith, for the purposes of that provision, must be decided by means of an overall assessment in which all the factors relevant to the particular case are taken into account and, in particular:
– the fact that the applicant knows or should know that a third party is using, in at least one Member State, an identical or similar sign for an identical or similar product liable to be confused with the sign for which registration is sought;
– the applicant’s intention of preventing that third party from continuing to use such a sign;
– the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought.
37 The Court of Justice also indicated, in paragraphs 43 and 44 of its judgment in Chocoladefabriken Lindt & Sprüngli, paragraph 19 above, that the intention of preventing a product from being marketed may, in certain circumstances, be indicative of bad faith on the part of the applicant. That is the case, in particular, where it subsequently becomes apparent that the applicant registered the sign as a Community trade mark with no intention of using it, his sole objective being to prevent a third party from entering the market.
38 That being so, as the Board of Appeal rightly stated in paragraph 35 of the contested decision, it is apparent from the wording used in the judgment in Chocoladefabriken Lindt & Sprüngli, paragraph 19 above, that the three factors set out in paragraph 36 above are only examples drawn from a number of factors which can be taken into account in order to decide whether the applicant was acting in bad faith at the time of filing the application (BIGAB, paragraph 35 above, paragraph 20).
39 It must therefore be held 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 word or the sign which forms the mark at issue and of the earlier use of that word or sign in business as a mark, in particular by competing undertakings, and of the commercial logic underlying the filing of the application for registration of that word or that sign as a Community trade mark.
40 In the present case, it follows, first of all, that it is necessary to reject the arguments in support of the applicant’s contention that the Board of Appeal took account of ‘new evidence of bad faith’ of a kind not envisaged by the Court of Justice in cases such as Chocoladefabriken Lindt & Sprüngli, paragraph 19 above, and which is even at variance with the criteria set out in that judgment. First, it should be noted that — as the Board of Appeal observed — the criteria laid down in the case-law are merely illustrative. Second, it should be stated that the criteria applied by the Board of Appeal in the contested decision are not at variance with the criteria established in Chocoladefabriken Lindt & Sprüngli; rather, they add to those criteria, in accordance with the approach set out in that judgment, that is to say, through an overall assessment of all of the relevant factors in the particular case. Accordingly, the Board of Appeal was correct to evaluate both the origin of the sign which forms the contested mark Simca and the earlier use of that sign in business as a mark, in particular by competing undertakings, and the commercial logic underlying the filing of the application for registration of the mark at issue, formed by that sign. Furthermore, in that context, there was nothing to prevent the Board of Appeal from going on to analyse the awareness on the part of the proprietor of the mark in respect of which a declaration of invalidity was sought, at the time when the application for registration was made, of the existence of earlier marks featuring the sign SIMCA and the extent of their reputation.
41 In that regard, the General Court observes, first of all, that it is common ground that the sign SIMCA was created in France as early as 1934 by a car manufacturer and that vehicles covered by a mark featuring that sign have been sold since the 1930s. That mark was subsequently taken over in 1978 by Automobiles Peugeot, which used it throughout the world, including in Europe.
42 It is also common ground that the intervener is the holder of two earlier figurative marks which feature the word ‘simca’, one of which is a French mark registered under No 121992 and filed on 5 March 1959 and the other an international mark registered under No 218957, based on the French mark and protected in a number of Member States of the European Union, such as Germany, Spain, Italy, Hungary and Romania, and in the Benelux. Both the earlier French mark and the earlier international mark, although not used during the last decades — as was noted, inter alia, in paragraph 24 of the contested decision — have nevertheless been renewed and remained registered for the intervener at the time when the application was made for registration of the mark at issue.
43 Furthermore, although the Board of Appeal stated rather vaguely, at the end of paragraph 23 of the contested decision, that the marks mentioned above remained registered ‘at least for “vehicles” in Class 12’, it should be noted that the applicant does not raise before the General Court specific pleas relating to the possible implications of that statement for the question whether the former proprietor acted in bad faith as regards his application for registration of the mark at issue for the other goods at issue, that is to say, for ‘apparatus for locomotion by land, air or water.’ Rather, the applicant disputes the relevance of the registration of the earlier marks as such for the purposes of assessing whether the former proprietor acted in bad faith; and, next, it emphasises — as evidence establishing lack of bad faith — the fact that the former proprietor in fact used the mark at issue after its registration, initially to market electric bicycles, with the intention, subsequently, of using the mark also for ‘niche’ motorised vehicles.
44 In any event, moreover, it emerges from OHIM’s administrative file that the registration of the earlier international mark — a copy of which is appended to the intervener’s application for a declaration of invalidity and which is based on the earlier French mark — lists amongst the goods covered the two categories falling within Class 12 mentioned above. Moreover, it should be observed that, in the absence of evidence to the contrary, the findings made by the Board of Appeal concerning bad faith on the part of the former proprietor relate both to the section of his application for registration of the mark at issue that concerns ‘vehicles’ and to the section that concerns ‘apparatus for locomotion by land, air or water.’
45 Next, as the Board of Appeal stated in paragraph 37 of the contested decision, read in conjunction with paragraphs 1, 27 and 28 thereof, it is common ground that the former proprietor did not apply for registration of the mark at issue until 5 December 2007 and filed that application despite being aware of the intervener’s earlier SIMCA marks, as ‘historical’ marks at the very least. It is also common ground, moreover, that the former proprietor did not apply for revocation of the earlier French or international marks, the applicant maintaining before the General Court merely that it would be making those applications itself. As regards a number of references made by the applicant to steps already taken with a view to obtaining a declaration of invalidity in respect of some of the intervener’s earlier marks, apart from the fact that those references are based on documents relied on for the first time before the General Court and accordingly inadmissible (see paragraphs 25 to 27 above), it should be stated that, in any event, the only mark concerned by those steps is a German mark belonging to the intervener, registered under No 302008037708, and not the earlier French or international marks.
46 It should also be stated that, contrary to the assertions made by the applicant, the Board of Appeal was right to state in paragraph 38 of the contested decision, with reference to the evidence produced inter alia by the former proprietor himself, that he specifically was aware that the SIMCA mark enjoyed a reputation in relation to motor vehicles. Moreover, as can be seen from paragraph 25 of the contested decision, the Board of Appeal found that the extent of that reputation had been considerable in the past; that it could have diminished over the years, but that it still survived at the time when the contested decision was adopted, ‘in particular amongst persons who are familiar with vehicles marketed under the brand name “SIMCA”’.
47 In that connection, first of all, as regards the former proprietor’s knowledge of the mark Simca and his perception of that mark, it should be pointed out that, as can be seen from his letter of 15 June 2007 to the Indian undertaking W. (Annex XIV to the former proprietor’s reply of 26 December 2008 to the intervener’s statement setting out the grounds for the application for a declaration of invalidity), the former proprietor was seeking an ‘appropriate’ mark which was no longer used, or which had not been registered, and which accordingly had no legal protection. It was only after making those statements that the former proprietor applied for registration of the mark at issue, taking over, unchanged, the word element of the earlier figurative marks. Similarly, it can be seen from a letter dated 5 September 2007 from the former proprietor to that Indian undertaking that he was aware of an earlier registration, in Germany, of the mark SIMCA-1100 City-Laster, in force until 1983, and of the success of sports cars bearing the SIMCA mark in car rallies in the 1970s.
48 Next, it can be seen from the letter of 17 March 2008 from the former proprietor to Mr S., Head of the intervener’s Executive Board — which, despite having been drafted after the application for registration of the mark at issue, offers some relevant evidence of the reasons which led the former proprietor to make that application — that the former proprietor’s purpose was to preserve the ‘marvellous’ SIMCA mark for posterity. In that same letter, the former proprietor also expressly referred to the ‘extraordinary history of the SIMCA mark’. Those statements must be read in conjunction with the introductory part of that letter, in which the former proprietor emphasises his knowledge of the automotive sector and his particular and lasting predilection for French cars, in particular the Peugeot or the Citroën. In that context, the former proprietor expressly mentioned having carried out searches both on the Internet and via OHIM in order to discover whether the SIMCA mark was still registered.
49 In view also of the former proprietor’s statement in that letter that he had purchased ‘in January 2008, in France, a SIMCA Aronde 9 car which perfectly matched the [Community] mark for which [he] had sought registration’ one month earlier, it must be concluded that the Board of Appeal was right to find that the former proprietor was fully aware that the ‘SIMCA mark enjoyed a reputation in relation to motor vehicles’. The above factors enable the General Court to find that, in the eyes of the former proprietor, the mark at issue still enjoyed, at the very least, a certain surviving reputation, which explains, moreover, his interest in that mark in the circumstances of the present case, and his intention to save it for future generations.
50 That finding is supported by the applicant’s argument, put forward in the application, that it was ‘public knowledge that the SIMCA mark had no longer been used by [the intervener] for several decades’. Such a statement assumes that the very existence of the SIMCA mark, as a ‘historical’ mark, was a well-known fact, at least for those members of the relevant public who had been familiar with vehicles marketed under that name in the past.
51 Those considerations cannot be weakened by the applicant’s reference to the content of its pre-litigation letter to OHIM of 2 August 2011, in which it is claimed that even members of the public who are connoisseurs would no longer remember the SIMCA mark. In that regard, it should be noted that the evidence appended to that letter in order to support that statement consists, in particular, of extracts from the websites of some car sellers, especially those operating on the second-hand market.
52 In so far as it is possible to draw some conclusions from those website extracts, they show, at most, only that some sellers no longer offered vehicles with the SIMCA mark for sale on the second-hand market. Accordingly, in the absence of other evidence to the same effect, such as the results of surveys of the relevant public, it cannot be ruled out that — as the Board of Appeal maintains in paragraph 25 of the contested decision, alluding to the evidence referred to in paragraph 5 of that decision, concerning the ‘history’ of the SIMCA mark — a surviving reputation may have remained, in particular with one section of the relevant public, as defined by the Board of Appeal (see paragraphs 46 and 50 above).
53 It should be added that, apart from the German magazine article, published in December 1989, concerning the history of cars manufactured under the SIMCA 1000 mark — a document to which the intervener referred in the administrative procedure before OHIM, in particular, in its letter of 29 March 2010, and which is mentioned in paragraph 5 of the contested decision — the finding that, on the relevant date (when the application for registration of the mark at issue was filed), the intervener’s earlier SIMCA marks still enjoyed a certain surviving reputation is borne out by the former proprietor’s reference, in his pre-litigation letter of 26 December 2008 to OHIM, to the extract from a website relating to the exhibition of the French Francemobile vehicles. Given that even the organiser of that exhibition reproduced the SIMCA mark on its advertising site, among the various logos of vehicle manufacturers exhibited, that extract may be regarded as further evidence of the SIMCA mark’s reputation, independently of the question whether that logo precisely matched that registered in favour of the intervener.
54 Nor, moreover — contrary to the assertions made by the applicant — did the Board of Appeal err in law in taking account, in the course of its overall assessment of the evidence of bad faith on the part of the former proprietor, of factual information concerning his intentions and objectives on the date when the application for registration was filed. The Board of Appeal cannot be criticised for having analysed ‘subjective evidence of the intrinsic reasoning’ underlying the former proprietor’s actions, in the light, inter alia, of his letters to trading partners and, following his application for registration, also of his letters in response to correspondence from the intervener.
55 Suffice it to note that it is clear from Chocoladefabriken Lindt & Sprüngli, paragraph 19 above (paragraphs 38 to 42), that, for the purposes of assessing whether the applicant for a Community trade mark acted in bad faith when filing the application for registration of a sign, it is necessary also to take account of his ‘intention’ to prevent a third party from continuing to use it, the Court having pointed out that that intention was a subjective factor which had to be determined by reference to the objective circumstances of the given case.
56 In the light of all the foregoing, it must be held that the Board of Appeal was entitled to infer from the particular circumstances of the present case that the real purpose of the former proprietor’s application for registration of a Community trade mark was to ‘free-ride’ on the reputation of the intervener’s registered marks and to take advantage of that reputation.
57 Admittedly, as the applicant argues and as the Cancellation Division initially emphasised, it is clear from recital 10 in the preamble to Regulation No 207/2009 that there is no justification for protecting Community trademarks or, as against them, any trade mark which has been registered before them, unless the trademarks are actually used.
58 In the same way, the applicant refers to First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1) and, more specifically, to Article 12 of that directive, laying down ‘Grounds for revocation’, which applies — read in conjunction with Article 1 of that directive — ‘to every trade mark … which is the subject of registration or of an application in a Member State … or which is the subject of a registration or an application for registration in the Benelux Trade Mark Office or of an international registration having effect in a Member State.’ The applicant also refers to Article L-714.5 of the French Code de la Propriété Intellectuelle (Intellectual Property Code) and to Paragraphs 25 and 49 of the Gesetz über den Schutz von Marken und sonstigen Kennzeichen (Markengesetz; German Law on the protection of trade marks and other signs) of 25 October 1994 (BGBl. 1994 I, p. 3082, BGBl. 1995 I, p. 156, and BGBl. 1996 I, p. 682), those also being provisions that essentially specify, at national level, the circumstances in which a finding can be made that the rights over trade marks have been revoked in the absence of genuine use, in particular, following legal proceedings brought by an interested person.
59 In the present case, however, it is clear that the Board of Appeal did not base its finding that the former proprietor had acted in bad faith solely on a single fact that it deemed to be relevant and recalled in paragraph 37 of the contested decision, that is to say, on the fact that the former proprietor had applied for registration of the mark at issue even though he was aware of the existence of the earlier marks and without having acted beforehand to revoke them.
60 As can be seen from paragraph 38 of the contested decision, the Board of Appeal took especial account of the former proprietor’s specific aim, which was ‘to “free-ride” on [the intervener’s] known registered marks and to take advantage of [their] good reputation … by intentionally making unlawful use of the SIMCA sign’. That approach on the part of the Board of Appeal does not constitute an error of law, since — as is apparent from Chocoladefabriken Lindt & Sprüngli, paragraph 19 above — the question whether the applicant for registration is acting in bad faith, for the purposes of Article 52(1)(b) of Regulation No 207/2009, must be addressed by means of an overall assessment in which account is taken of all the relevant factors in the particular case. First, as has already been mentioned (see paragraph 39 above), one of those factors is the origin of the word or sign forming the mark at issue and the earlier use of that word or sign in business as a mark, in particular by competing undertakings, that is to say, with regard to the present case, the circumstances which are not in dispute and which show that there has been genuine use — or, at the very least, ‘historical’ use — of marks containing the SIMCA sign by the intervener or by an undertaking belonging to its group, which took place before the former proprietor made use of that sign in the mark at issue.
61 Secondly, the Board of Appeal was correct to refer to the commercial logic underlying the filing of the application by the former proprietor for registration of the sign as a Community trade mark, taking account of the fact that the logic of his approach as described to his commercial partners consisted in the intention of using a mark adapted to the goods covered by the registration, even if that mark was unregistered or a mark which, although registered, had lost all legal protection, inter alia because it had not been put to genuine use by its holder (see paragraph 45 et seq. above). Moreover, the applicant emphasises that same line of reasoning in paragraph 41 of the application initiating proceedings, stating that it was precisely the fact that the earlier marks had not been used for a long time that could be construed as ‘a reason that had encouraged [the former proprietor], who was aware of that fact, to file an application for a mark in order to use it for his own advantage’.
62 Accordingly, and in so far as it is not established that, even before filing the application for registration of the mark at issue, the former proprietor had marketed goods on the relevant market under that mark, it is not possible to discern another line of commercial reasoning, independent of that making the most of the reference to the intervener or to undertakings belonging to its group. In particular, the applicant cannot claim that the former proprietor sought, by means of that application, to prevent third party undertakings from using his mark without his permission, by leading customers to believe that they were distributing the same goods as those of the former proprietor, or that he had merely sought to extend the protection of the mark at issue by registering it.
63 Accordingly, the applicant cannot rely on the mere fact that the earlier marks were no longer used in order to rebut the finding that the former proprietor had been acting in bad faith at the time of registration. As has already been determined, the evidence in the present case establishes that registration of the sign at issue was deliberately sought in order to create an association with the earlier marks and to take advantage of their reputation on the motor vehicle market, even to compete with those earlier marks if they were re-used by the intervener in the future. In that regard, it was not for the former proprietor to divine the intervener’s future commercial intentions as proprietor of the earlier marks, which were regularly renewed; nor was it even for the former proprietor to conclude, in the absence of an application for a declaration of invalidity with respect to the earlier marks, that the intervener ‘did not have the status of a proprietor worthy of protection.’ Moreover, without it even being necessary to determine the accuracy of OHIM’s argument before the General Court that it was common on the car market for marks which had not been used for quite a long time to be re-used, in limited editions, for car enthusiasts, it must be stated that the article published on 2 September 2008 in a daily newspaper, republished online by the Internet Autohaus website and an extract from which is attached to the former proprietor’s letter of 26 December 2008 to OHIM, shows that he was aware — at the latest by that date and without that knowledge leading him to surrender his right to the contested mark — that the intervener planned to re-use marks ‘such as Talbot’, in particular for low price vehicles, following — according to that article — in that connection, the example of Renault, which had revived its Dacia mark. Accordingly, it could not be ruled out that the intervener might also seek to re-use its SIMCA mark.
64 Those conclusions are not weakened by the various arguments raised by the applicant on the basis of ‘adverse possession under trade mark law’.
65 By its arguments, the applicant challenges the idea of a legal rule under which a mark which has been registered but for which the ‘end of the period of protection’ has arrived cannot be newly registered in the name of a third party that is not the original proprietor. The applicant refers in that regard to Article 19 of Regulation No 207/2009 and recital 11 in the preamble thereto.
66 Clearly, the question that arises in the present case is not confined to the issue referred to above, but — as has already been noted — the Board of Appeal also took into consideration, before going on to conclude that the former proprietor had acted in bad faith, facts relating to the surviving reputation of the earlier marks and the commercial reasoning underlying the filing of the application for registration of the mark at issue, as the former proprietor was seeking in that way to take advantage of those marks. Accordingly, contrary to the view argued for by the applicant, which can be attributed to an incorrect reading of the contested decision, the Board of Appeal did not intend to endorse the legal rule described in the preceding paragraph. In consequence, the applicant’s references to recital 11 and to Article 19 of Regulation No 207/2009 are ineffective ab initio since there is no actual link between those references and the decisive factor which led the Board of Appeal to conclude that the way in which the former proprietor had behaved constituted conduct in bad faith, that is to say, the references are unrelated to the fact that the former proprietor sought to take advantage of the surviving reputation of the earlier marks.
67 As regards the various arguments put forward by the applicant to the effect that reversal of the presumption of bad faith is not conditional upon an action having been brought against earlier opposable marks, capable of being declared invalid, it is sufficient to state that the Board of Appeal did not apply such a condition; rather, as has already been stated, the Board of Appeal undertook an overall analysis of all the relevant evidence in the case (see, inter alia, paragraphs 37 to 39 of the contested decision, read in conjunction with paragraph 25 thereof).
68 As regards, next, the applicant’s arguments that, even if the earlier marks were not capable of being declared invalid, they protected ‘only the figurative elements, or the combination of figurative and word elements, whereas the mark in dispute [was] purely a word mark for which the area of protection [was] different’, the applicant accordingly claiming that the ‘areas of protection’ of those marks were different, it should be noted that the Board of Appeal’s reasoning in the contested decision, in particular in paragraphs 25, 27 and 38 thereof, shows that, in the view of the Board of Appeal, the surviving reputation of the earlier marks attached, in particular, to the word ‘simca’, the only word element of those figurative marks, re-used, without any changes, in the mark at issue. Similarly, it is apparent from the Board of Appeal’s reasoning that it believed that the former proprietor’s Community trade mark was inspired by the earlier marks, the intention being to ‘free-ride’ on their reputation and to take advantage of that reputation through unlawful use of the Simca sign. Furthermore, it is settled case-law that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have graphic form capable of creating a visual impression (see judgment of 23 April 2013 in Case T‑109/11 Apollo Tyres v OHIM — Endurance Technologies (ENDURACE), not published in the ECR, paragraph 60 and the case-law cited).
69 Accordingly and in so far as the former proprietor did not put forward before OHIM specific arguments to support the contention that the marks at issue were so different that they were unlikely to be confused, but merely referred, in a general manner, to the fact that the earlier marks were figurative, it must be concluded that the Board of Appeal was not required to explain in more detail its assessment of the similarities between those marks, since it had, moreover, sufficiently explained its considerations, mentioned above, concerning the surviving reputation enjoyed by the word element common to those marks.
70 As regards the applicant’s argument concerning the fact that the ‘offer of compensation’ which had been made by the former proprietor to the intervener cannot, according to the case-law (Case T‑291/09 Carrols v OHIM — Gambettola (Pollo Tropical CHICKEN ON THE GRILL) [2012] ECR), be regarded as indicative of bad faith, and as regards its argument that neither the former proprietor nor the applicant itself had ‘approached [the intervener] in order to draw its attention to [the Community trade mark at issue] and to obtain a financial advantage’, it should be noted that, as the applicant itself stated in the application, although the Board of Appeal referred, in the section of the contested decision entitled ‘uncontested facts’, to a number of aspects considered to be of ‘decisive importance for the assessment of the facts’, it nevertheless did not refer to all those aspects in the section concerning the existence of bad faith. In particular, it is clear that the Board of Appeal did not draw specific inferences in that regard from its finding in paragraph 31 of the contested decision concerning the ‘offer of compensation’, in the context of which the former proprietor stated that he was prepared, in certain circumstances, to surrender the mark at issue.
71 In the circumstances of the present case, therefore, the above contention — by which the applicant argues that an offer to negotiate on the basis of a proposal to surrender a mark in return for compensation does not constitute sufficient evidence of bad faith — is ineffective ab initio and cannot have any bearing on the legality of the contested decision.
72 It should be added for the sake of completeness that, although the General Court stated in the context of the case which gave rise to the judgment in Pollo Tropical CHICKEN ON THE GRILL, paragraph 70 above (paragraphs 61 and 62), that the applicant for a declaration of invalidity in respect of a Community trade mark had not adduced evidence to support the presumption — on which it based its argument that the proprietor of the mark had acted in bad faith — that the proprietor could not have been unaware of the existence of earlier marks, it is by contrast common ground in the present case that, at the time when the mark at issue was filed, the former proprietor was already aware of the existence of the intervener’s earlier SIMCA marks and their earlier use in the 1970s. Accordingly, the significance of the proposal to surrender the Community trade mark in return for compensation is different from that of the proposal made in the case which gave rise to the judgment in Pollo Tropical CHICKEN ON THE GRILL, paragraph 70 above, in particular owing to the fact that, as soon as he filed the application for registration, the former proprietor could expect — not altogether unrealistically — to receive an offer of financial compensation from the intervener.
73 Lastly, the applicant’s other specific contentions must be dismissed, since none of them is capable of invalidating the above conclusions.
74 In the first place, the mere fact that the former proprietor has actually marketed electric bicycles under the Community trade mark Simca ‘since at least … 2008’ cannot, even if it is considered to be established, be held to be relevant, in so far as — as can be seen from paragraphs 37 to 40 of the contested decision — the Board of Appeal’s finding regarding the existence of bad faith on the part of the former proprietor was not based on the lack of a genuine interest in marketing the goods covered by that mark, but rather on his intentions to free-ride on the reputation of a mark registered in favour of another and known on the relevant market.
75 In the second place, as regards the various references made by the applicant to administrative and judicial proceedings in Germany, it should be stated that the Board of Appeal was correct in finding — in particular, in paragraphs 20 and 21 of the contested decision — that the Community trade mark regime was an autonomous system with its own set of objectives and rules peculiar to it, and which applies independently of any national system (see, to that effect, Case T‑150/04 Mülhens v OHIM — Minoronzoni (TOSCA BLU) [2007] ECR II‑2353, paragraph 40 and the case-law cited). Within the meaning of that judgment, a decision of a national court is not binding upon the OHIM authorities or the Courts of the European Union.
76 However, it is also clear from the case-law that neither the parties nor the Court itself can be precluded from drawing on European Union, national or international case-law for the purposes of interpreting EU law (see, to that effect, Case T‑277/04 Vitakraft-Werke Wührmann v OHIM — Johnson’s Veterinary Products (VITACOAT) [2006] ECR II‑2211, paragraphs 69 to 71).
77 In the present case, other than the relevance of the Board of Appeal’s statement in paragraph 21 of the contested decision that it was unaware of the evidence lodged in the parallel proceedings in Germany and that, accordingly, the judgment of the Bundesgerichtshof could not constitute a precedent, it should be noted that the earlier marks — one French and the other international, the latter being protected, inter alia, in several Member States of the European Union — may produce different procedural effects, on the one hand, in the parallel proceedings concerning a German mark and, on the other, in the present proceedings, which concern the application, on grounds of bad faith, for a declaration of invalidity in respect of a Community mark and in which the question of the surviving reputation of the earlier marks enters into consideration.
78 In the third place, the applicant submits that the independent activity in which the former proprietor had engaged for Citroën AG in Cologne and, in 2005, for a branch of Peugeot in Bremen was wholly unrelated to his application for a Community trade mark. In particular, according to the applicant, although the former proprietor had acquired information in the context of his temporary activity as a supplier of software, he had not specifically needed to carry out additional research in order to make the application for the ‘allegedly parasitic’ trade mark.
79 In that regard, suffice it to state, in a manner analogous to the finding made in paragraphs 70 and 71 above, that the structure and the content of the contested decision show that the Board of Appeal did not rely, as a basis for its finding that the former proprietor had acted in bad faith, on the relationship of cooperation that he had had, in the past, with the intervener or other undertakings belonging to its group.
80 Lastly, it is necessary to reject the applicant’s contentions concerning the ‘disproportionate brevity’ of the contested decision and the alleged lack of ‘any legal arguments or any assessment of the principles of trade mark law’, whether those contentions are intended to allege that the Board of Appeal erred in its appraisal of the merits or that it failed to state adequate reasons.
81 In that regard, first, in so far as the applicant may thereby be alleging that the Board of Appeal erred in its appraisal of the merits of the present case, the General Court has already determined, in all the considerations set out in the present judgment, that the contested decision was well founded. In that connection, the General Court has taken account both of the legal arguments set out by the Board of Appeal and of the ‘principles of trade mark law’.
82 Secondly, if it is correct to construe the above contentions on the part of the applicant as alleging that the Board of Appeal failed to state adequate reasons for the contested decision, suffice it to state that — as can be seen from the considerations set out by the Board of Appeal, as summarised in paragraphs 9 to 22 above — the Board of Appeal set out its reasons, in accordance with settled case-law, in a clear and unequivocal fashion, thus enabling the applicant to ascertain the reasons for the measure taken and, accordingly, to defend its rights, and making it possible for the Courts of the European Union to exercise their jurisdiction to review that decision (see, to that effect, judgment of 15 October 2013 in Case T‑379/12 Electric Bike World v OHIM — Brunswick (LIFECYCLE), not published in the ECR, paragraph 30 and the case-law cited).
83 In the light of all of the foregoing, the applicant’s sole plea in law must be rejected and, in consequence, the action must be dismissed in its entirety.
Costs
84 Under Article 87(2) 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.
85 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM and the intervener.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1. Dismisses the action;
2. Orders Simca Europe Ltd to pay the costs.
Dittrich | Schwarcz | Tomljenović |
Delivered in open court in Luxembourg on 8 May 2014.
[Signatures]