Judgment of the General Court (Ninth Chamber) of 29 September 2021 –
Univers Agro v EUIPO – Shandong Hengfeng Rubber & Plastic (AGATE)
(Case T‑592/20)
(EU trade mark – Invalidity proceedings – EU word mark AGATE – Absolute ground for refusal – Bad faith – Article 52(1)(b) of Regulation (EC) No 207/2009 (now Article 59(1)(b) of Regulation (EU) 2017/1001))
1. EU trade mark – Appeals procedure – Action before the EU judicature – Jurisdiction of the General Court – Declaratory judgments – Precluded
(European Parliament and Council Regulation 2017/1001, Art. 72(3))
(see para. 15)
2. EU trade mark – Appeals procedure – Action before the EU judicature – Power of the General Court to alter the contested decision – Limits
(European Parliament and Council Regulation 2017/1001, Art. 72(3))
(see para. 16)
3. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Applicant in bad faith when lodging the trade mark application – Concept of bad faith – Scope
(Council Regulation No 207/2009, Art. 52(1)(b))
(see paras 22-25)
4. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Applicant in bad faith when lodging the trade mark application – Criteria for assessment – Taking into account of all relevant factors at the time of filing the application for registration – Applicant’s knowledge that a third party is using an identical or similar sign – Intention of the applicant – Degree of legal protection of the signs at issue – Origin and use of the sign in dispute – Commercial logic underlying the registration of the contested sign as an EU trade mark – Chronology of events characterising the filing of the trade mark application
(Council Regulation No 207/2009, Art. 52(1)(b))
(see paras 26, 28-30, 68)
5. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Applicant in bad faith when lodging the trade mark application – Criteria for assessment – Need to prove the existence of the likelihood of confusion between the marks at issue – Precluded
(Council Regulation No 207/2009, Art. 52(1)(b))
(see para. 27)
6. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Applicant in bad faith when lodging the trade mark application – Burden of proof
(Council Regulation No 207/2009, Art. 52(1)(b))
(see paras 31-33)
7. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Applicant in bad faith when lodging the trade mark application – Word mark AGATE
(Council Regulation No 207/2009, Art. 52(1)(b))
(see paras 45, 46, 59, 60, 63, 69-72, 74, 97)
8. EU trade mark – Procedural provisions – Measures of inquiry – Production of documents – Discretion of the Board of Appeal
(European Parliament and Council Regulation 2017/1001, Art. 97(1)(c))
(see paras 51, 53, 54)
9. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Applicant in bad faith when lodging the trade mark application – Proof of bad faith – Probative value of the evidence – Criteria for assessment – Solemn declarations
(European Parliament and Council Regulation 2017/1001, Art. 97(1)(f))
(see para. 77)
Re:
| Action brought against the decision of the Fourth Board of Appeal of EUIPO of 27 July 2020 (Case R 725/2019-4), relating to invalidity proceedings between Shandong Hengfeng Rubber & Plastic and Univers Agro. |
Operative part
The Court:
2. | | Orders Agro EOOD to pay the costs. |