Case T-227/09

Feng Shen Technology Co. Ltd

v

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

(Community trade mark — Invalidity proceedings — Community figurative mark FS — Applicant acting in bad faith — Article 51(1)(b) of Regulation (EC) No 40/94 (now Article 52(1)(b) of Regulation (EC) No 207/2009)

Summary of the Judgment

1.      Community trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Applicant acting in bad faith when filing the application for a trade mark — Criteria for assessment — Taking account of all the relevant factors existing at the time of filing the application for registration

(Council Regulation No 40/94, Art. 51(1)(b))

2.      Community trade mark — Appeals procedure — Action before the Union courts — Possibility for the General Court to alter the contested decision — Limits

(Council Regulation No 207/2009, Art. 65(3))

1.      The applicant’s bad faith within the meaning of Article 51(1)(b) of Regulation No 40/94 on the Community trade mark should must be assessed as a whole, taking account of all the factors in the particular case, and, in particular:

–        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;

–        the applicant’s intention to prevent that third party from continuing to use such a sign;

–        the degree of protection enjoyed by the third party’s sign and by the sign for which registration is sought.

The intention to prevent a third party from marketing a product may, in certain circumstances, be an element of bad faith on the part of an applicant. That is in particular the case when it becomes apparent, subsequently, that the applicant applied for registration of a sign as a Community trade mark without intending to use it, his sole objective being to prevent a third party from entering the market. However, the applicant may also pursue a legitimate objective in wishing to protect himself from an attempt by a third-party who, by its recent arrival on the market, seeks to take advantage of the reputation of the applicant’s sign. That said, that the 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 for registration was acting in bad faith at the time of filing the application.

(see paras 33-36)

2.      The power to alter decisions under Article 65(3) of Regulation No 207/2009 on the Community trade mark does not have the effect of conferring on the Court the power to substitute its own reasoning for that of a Board of Appeal or to carry out an assessment on which that Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take.

(see para. 55)