Case T—33/11

Peeters Landbouwmachines BV

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community trade mark — Invalidity proceedings — Community word mark BIGAB — Absolute ground for refusal — No bad faith — Article 52(1)(b) of Regulation (EC) No 207/2009)

Summary of the Judgment

Community trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Applicant in bad faith at the time of lodging the trade mark application — Criteria for assessment — Taking into account of all relevant factors at the time of filing the application for registration

(Council Regulation No 207/2009, Art. 52(1)(b))

The existence of bad faith on the part of the applicant, as referred to in Article 52(1)(b) of Regulation No 207/2009 on the Community trade mark, 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 following:

— 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 identical or similar goods, which could give rise to confusion 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.

In addition, the intention of preventing certain goods 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 had the sign registered as a Community trade mark with no intention of using it, his sole objective being to prevent a third party from entering the market.

That being so, the three factors set out 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. 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 at issue and its use since its creation, and of the commercial logic underlying the filing of the application for registration of that sign as a Community trade mark.

The fact that the applicant knows or must know that a third party has long been using, in at least one Member State, an identical or similar sign for identical or similar goods, which could give rise to confusion with the sign for which registration is sought, is not sufficient in itself to permit the conclusion that the applicant was acting in bad faith. Accordingly, it cannot be excluded that, where a number of producers use, on the market, identical or similar signs for identical or similar goods, which could give rise to confusion with the sign for which registration is sought, the applicant’s registration of the sign may be in pursuit of a legitimate objective. That can be the position, in particular, where the applicant knows, at the time of filing the application for registration, that a third undertaking is making use of the mark covered by that application by giving its clients the impression that it officially distributes the goods sold under that mark, even though it has not received authorisation to do so.

The good faith of a trade mark applicant cannot be challenged solely because that applicant is the proprietor of other marks and it did not take the initiative of applying to have those marks registered as Community trade marks.

For the purposes of determining whether the trade mark applicant was acting in bad faith, consideration may be given to the extent of the reputation enjoyed by a sign at the time when the application for its registration as a Community trade mark was filed, since the extent of that reputation might justify the applicant’s interest in ensuring a wider legal protection for his sign.

(see paras 18-21, 27, 28, 30)