Court of Justice of the European Communities (including Court of First Instance Decisions)

JUDGMENT OF THE GENERAL COURT (Third Chamber)

21 May 2015 (*)

(Community trade mark — Invalidity proceedings — Figurative Community trade mark URB — Application for the earlier national mark URB, earlier national collective word mark URB, earlier national collective figurative mark URB and earlier international figurative marks URB — Absolute ground for refusal — No bad faith on the part of the proprietor of the Community trade mark — Article 52(1)(b) of Regulation (EC) No 207/2009 — Relative ground for refusal — No authorisation by the proprietor of the earlier marks — Article 8(1)(b) and Article 53(1)(a) of Regulation No 207/2009 — No infringement of Articles 22(3) and 72(1) of Regulation No 207/2009)

In Case T‑635/14,

Urb Rulmenti Suceava SA, established in Suceava (Romania), represented by I. Burdusel, lawyer,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Bullock, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being

Harun Adiguzel, residing in Diosd (Hungary), represented by G. Bozocea, lawyer,

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 23 June 2014 (Case R 1974/2013-4) concerning invalidity proceedings between Urb Rulmenti Suceava SA and Mr Harun Adiguzel,

THE GENERAL COURT (Third Chamber),

composed of S. Papasavvas (Rapporteur), President, N.J. Forwood and E. Bieliūnas, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 22 August 2014,

having regard to the response of OHIM lodged at the Court Registry on 14 October 2014,

having regard to the response of the intervener lodged at the Court Registry on 14 November 2014,

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 General Court, to give a ruling without an oral procedure,

gives the following

Judgment

 Background to the dispute

1        On 2 November 2009, the intervener, Mr Harun Adiguzel, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

2        Registration as a trade mark was sought for the following figurative sign:

3        The goods in respect of which registration was sought are in Classes 4, 6 to 9, 11, 12, 16, 17, 35, 37 and 39 to 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. The trade mark in question was registered on 22 June 2011.

4        On 25 June 2012, the applicant, Urb Rulmenti Suceava SA, submitted an application for a declaration of invalidity under, inter alia, Article 52(1)(b) and Article 53(1) and (2)(a) of Regulation No 207/2009, against the registration of the Community trade mark at issue.

5        In support of that application, the applicant relied, first, on the application for the Romanian trade mark URB, under reference M2006002478, second, on the Romanian collective registrations No 14568, of the word mark URB, and No 14567, of the figurative mark reproduced below, filed and registered on 30 September 1987 and renewed until 2017 for goods and services in Classes 6, 7, 35 and 42, third, on international registration No 249112 of the figurative mark reproduced below, filed with the Oficiul de stat pentru invenții şi mărci (OSIM, Romanian State Office for Inventions and Trade Marks), registered by the International Bureau of the World Intellectual Property Office (WIPO) on 2 November 1961, renewed until 2021 for goods in Classes 6 and 7, and covering Benelux, the Czech Republic, Germany, Spain, France, Italy, Hungary, Austria, Portugal, Slovenia and Slovakia and, fourth, on international registration No 377007 of the figurative mark reproduced below, lodged with OSIM, registered by the International Bureau of the WIPO on 25 March 1971, renewed until 2021 for goods in Classes 6 and 7, and covering Benelux, the Czech Republic, Germany, Spain, France, Italy, Hungary, Austria, Portugal, Slovenia and Slovakia. The figurative marks which are the subject of those registrations consist of the following sign:

6        The registered proprietor of the collective trade marks and the international registrations mentioned in paragraph 5 above (‘the earlier marks’) is S.C. URB SA. The applicant asserts that it was authorised to use those trade marks.

7        By decision of 9 August 2013, the Cancellation Division rejected the applicant’s application for a declaration of invalidity on the grounds that no evidence had been adduced of the bad faith of the intervener and that the applicant, which was not the proprietor of the earlier marks, was not entitled to rely on the likelihood of confusion between the marks at issue.

8        On 8 October 2013, the applicant filed an appeal with OHIM, pursuant to Articles 58 to 65 of Regulation No 207/2009, against the decision of the Cancellation Division.

9        By decision of 23 June 2014 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed that appeal.

10      In essence, the Board of Appeal, first, dismissed for lack of evidence the plea alleging breach of Article 52(1)(b) of Regulation No 207/2009. It then held that the plea alleging breach, first, of Article 8(1)(b), in conjunction with Article 53(1)(a) of that regulation, and, second, of Article 53(2) of the regulation had to be dismissed, given that the applicant was not the proprietor of the earlier marks on which it relied.

 Forms of order sought by the parties

11      The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs;

–        order the intervener to pay the costs incurred in the proceedings before OHIM. 

12      OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

13      The intervener submits that the Court should dismiss the action.

 Law

14      In support of its action, the applicant raises, in essence, three pleas in law, the first alleging infringement of Article 53(1)(a) of Regulation No 207/2009, the second, infringement of Article 22(3) and Article 72(1) of that regulation, and the third, infringement of Article 52(1)(b) of that regulation.

 The first plea in law, alleging infringement of Article 53(1)(a) of Regulation No 207/2009

15      The applicant claims, in essence, that the Board of Appeal was wrong to find that it could not file an application for a declaration of invalidity under Article 53(1)(a) of Regulation No 207/2009 in reliance, inter alia, on the application for a Romanian trade mark under reference M2006002478 and the collective Romanian registration Nos 14568 and 14567 referred to in paragraph 5 above. In that regard, the applicant complains that the Board of Appeal found that it was not the proprietor of those collective Romanian registrations (‘the earlier collective marks’). It adds that it was authorised to use the earlier collective marks.

16      OHIM and the intervener dispute those arguments.

17      In this case, it is apparent from the contested decision that, concerning the earlier collective marks, the Board of Appeal found that the relative ground for invalidity provided for by Article 53(1)(a) of Regulation No 207/2009, relied upon by the applicant, could not apply, on the ground that the latter was not the registered proprietor of the trade marks on which it relies and that it had not obtained from the proprietor authorisation to bring an action for a declaration of invalidity. With regard to the application for the Romanian trade mark under reference M2006002478, the Board of Appeal stated that the applicant had adduced evidence of its existence before the Cancellation Division, but that it had failed to mention that trade mark as the basis for the application for a declaration of invalidity in its statement of grounds for the action. The Board of Appeal therefore found that the applicant no longer intended to rely on that earlier right as the basis of its application for a declaration of invalidity.

18      In that regard, it must be observed that, under Article 56(1)(b) of Regulation No 207/2009, an application for a declaration that the trade mark is invalid may be submitted to OHIM, where Article 53(1) applies, by the persons referred to in Article 41(1), that is to say, by the proprietors of earlier trade marks and licensees authorised by the proprietors of those trade marks. Article 53(1)(a) of that regulation provides that a Community trade mark is to be declared invalid, on application to OHIM or on the basis of a counterclaim in infringement proceedings, where there is an earlier trade mark as referred to in Article 8(2) of that regulation and the conditions set out in Article 8(1) or (5) thereof are fulfilled.

19      Concerning, in the first place, the earlier collective marks, which the applicant invoked in support of its application for a declaration of invalidity of the Community trade mark, it is common ground that the applicant was not the proprietor of that mark. Furthermore, it does not appear from the documents before the Court that the applicant either had a licence or, in any event, had been authorised by the proprietor of the earlier collective marks to file an application for a declaration of invalidity with OHIM. In that regard, the applicant claims that the Board of Appeal refused to analyse the judicial decisions it had produced relating to the proprietors of the earlier collective marks and to the undertakings which are authorised to use them. However, it must be noted that that fact is not relevant since those decisions, which are not final, would not, in any event, have allowed the applicant to establish that, although it was not the proprietor of the earlier collective marks, it was authorised to file an application for a declaration of invalidity with OHIM.

20      Concerning, in the second place, the application for the Romanian trade mark under reference M2006002478, first, it should be noted that the applicant does not dispute the Board of Appeal’s assessment according to which that earlier right, if it is not mentioned in the statement of grounds for the action, no longer constitutes a basis for the application for a declaration of invalidity. Second, and in any event, it should be noted that Article 8(2)(b) of Regulation No 207/2009, reference to which is made in Article 53(1)(a) of that regulation, provides that applications for trade marks registered in a Member State, with a date of application for registration which is earlier than the date of application for registration of the Community trade mark, constitute ‘earlier trade marks’ within the meaning of Article 8(1) of that regulation, subject to their registration. It must be noted, in this case, that the applicant neither establishes nor even claims that application for the abovementioned Romanian trade mark was subject to registration.

21      It follows from the above that the Board of Appeal was right to find that the applicant had no authority to file an application for a declaration of invalidity of the Community trade mark at issue under Article 53(1)(a) of Regulation No 207/2009. The first plea in law must therefore be rejected.

 The second plea in law, alleging infringement of Article 22(3) and Article 72(1) of Regulation No 207/2009

22      The applicant claims that it requested from the proprietor of the earlier collective marks the authorisation to bring an action for a declaration of invalidity against the Community trade mark at issue, but that that proprietor refused to act, without giving any reason. It claims that it was thus entitled, in accordance with the combined provisions of Article 22(2) and (3) and Article 72 of Regulation No 207/2009, and moreover with Articles 44 and 55 of Romanian Law No 84/1998 regarding trade marks and geographical indications, to bring an action for a declaration of invalidity against the proprietor of that Community trade mark.

23      OHIM and the intervener dispute those arguments.

24      In that regard, it must be observed that it follows from Article 22(3) of Regulation No 207/2009 that, without prejudice to the terms of the licensing contract, the licensee may bring proceedings for infringement of a Community trade mark only if its proprietor consents thereto. However, that article makes clear that the holder of an exclusive licence may bring such proceedings if the proprietor of the trade mark, after formal notice, does not himself bring infringement proceedings within an appropriate period. Moreover, Article 72(1) of that regulation provides, inter alia, that Article 22(3) is to apply to every person who has authority to use a Community collective mark.

25      However, it must be observed that those provisions are applicable not to applications for a declaration of invalidity but to actions for infringement. The same is true of the provisions of Romanian law relied on by the applicant. Therefore, the present plea in law is ineffective and must be rejected.

 The third plea in law, alleging infringement of Article 52(1)(b) of Regulation No 207/2009

26      The applicant claims that the intervener acted in bad faith when he filed his application for a Community trade mark.

27      OHIM and the intervener dispute that argument.

28      In this case, the Board of Appeal took the view that the fact that the earlier collective marks were not registered in the name of the applicant ruled out any possibility that the intervener acted in bad faith towards it. The Board of Appeal added that nothing in the documents before the Court demonstrated the existence of specific obligations by which the intervener was bound. Finally, that Board held that the applicant’s argument that there was a connection between the earlier collective marks and the intervener was ineffective. The Board of Appeal concluded that the intervener did not act in bad faith when filing the application for a Community trade mark.

29      In that regard, it should be noted that Article 52(1)(b) of Regulation No 207/2009 provides that a Community trade mark is to be declared invalid where the applicant was acting in bad faith when he filed the application for the trade mark.

30      It is for the applicant for a declaration of invalidity seeking to rely upon that ground 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 (see judgment of 13 December 2012 in pelicantravel.com v OHIM — Pelikan (Pelikan), T‑136/11, EU:T:2012:689, paragraph 21 and the case-law cited).

31      Moreover, in its judgment of 11 June 2009 in Chocoladefabriken Lindt & Sprüngli (C‑529/07, ECR, EU:C:2009:361, paragraph 53), the Court stated that, in order to determine whether the applicant is acting in bad faith within the meaning of Article 52(1)(b) of Regulation No 207/2009, it is necessary to take into consideration all the relevant factors specific to the particular case, 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.

32      It is apparent from the wording used by the Court in that judgment that the three factors set out in paragraph 31 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 trade mark application (judgments of 14 February 2012 in Peeters Landbouwmachines v OHIM — Fors MW (BIGAB), T‑33/11, ECR, EU:T:2012:77, paragraph 20, and Pelikan, cited in paragraph 30 above, EU:T:2012:689, paragraph 26).

33      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 commercial logic underlying the filing of the application for registration of the sign as a Community trade mark (BIGAB, cited in paragraph 32 above, EU:T:2012:77, paragraph 21), and the chronology of events relating to the filing (see, to that effect and by analogy, judgment of 3 June 2010 in Internetportal und Marketing, C‑569/08, ECR, EU:C:2010:311, paragraph 52).

34      Finally, the Court added that in order to determine whether there was bad faith, it was also necessary to consider the applicant’s intention at the time when he files the application for registration (judgment in Chocoladefabriken Lindt & Sprüngli, cited in paragraph 31 above, EU:C:2009:361, paragraph 41). The Court made clear that the applicant’s intention at the relevant time was a subjective factor which had to be determined by reference to the objective circumstances of the particular case (judgment in Chocoladefabriken Lindt & Sprüngli, cited in paragraph 31 above, EU:C:2009:361, paragraph 42).

35      It is in the light of those considerations that the applicant’s arguments must be examined.

36      First, the applicant claims that the intervener was aware of the fact that S.C. Rulmenti SA Barlad was, like the applicant, one of the undertakings authorised to use the earlier collective marks URB, since the intervener was vice-president of that company. According to the applicant, all the companies which are authorised to use the earlier collective marks had the same rights over those trade marks and no third party had the right to register any of those trade marks.

37      In this case, it is not disputed that the Romanian bearing production undertakings were originally State owned. The bearings were marketed throughout the world under the collective trade marks URB held by Centrala industriala de rulmanti si organe d’asamblare (CIROA, industrial plant for bearings and industrial fasteners), which was the department of the Ministry for Industry responsible for coordinating Romanian bearings producers. Once the process of privatisation was under way, CIROA’s assets were transferred to S.C. URB, a private company which, as was stated in paragraph 6 above, was the proprietor of the earlier trade marks. However, several companies, including the applicant and S.C. Rulmenti SA Barlad, a company of which the intervener is the vice-president, were authorised to use the earlier collective trade marks.

38      However, it is not apparent from the documents before the Court that the applicant was still entitled to use the earlier collective trade marks at the time when the intervener filed his application for a Community trade mark. It is apparent both from the written submissions of OHIM and from the decision of the Cancellation Division that, in 2002 the Regulament de utilizare al marcii (Romanian regulation on the use of the earlier collective trade marks) was amended and that, following that amendment, that regulation no longer contained the list of undertakings authorised to use those collective trade marks. Thus, Article 2 of the amended version of that regulation provides that third parties would have the right to use the collective trade marks only under a franchise agreement managed by the registered proprietor of those trade marks. In contrast to S.C. Rulmenti Barlad, the applicant was not party to such an agreement, which means that from 2002 onwards it was no longer entitled to use the earlier collective trade marks.

39      The applicant replies that it is apparent from the OSIM archives that it is one of the undertakings which is authorised to use the earlier collective marks. In support of that claim, the applicant puts forward a list, established by CIROA, of undertakings authorised to use those trade marks, which includes the applicant. However, it must be noted that that document is not dated. The intervener puts forward a letter, sent on 15 January 2009 to the applicant by OSIM, in which the latter informed the intervener that the proprietor of those trade marks had not informed it, following the amendment of the Regulament de utilizare al marcii, of the persons authorised to use those trade marks.

40      Moreover, it must be noted that, in its written submissions, the applicant makes clear that it is disputing from the outset the legality of the Regulament de utilizare al marcii established by S.C. URB, the holder of the earlier collective trade marks. It also states that that regulation was annulled by a judgment of the Tribunalul Bucureşti (local court, Bucarest, Romania) of 5 June 2012, upheld on 13 February 2013 by a judgment of the Curtea de apel Bucureşti (Bucarest Appeal Court). However, it is not apparent from the documents before the Court that this judgment is final, as the intervener pointed out that that judgment had been annulled by the Înalta Curte de Casaţie şi Justiţie (High Court of Cassation and of Justice, Romania). In any event, it is common ground that those judicial decisions were given on dates later than that on which the intervener filed his application for a Community trade mark, that is to say, 2 November 2009, and are therefore not relevant for the purposes of assessing the bad faith of the latter when filing his application for a Community trade mark.

41      It follows therefore from the foregoing that, at the time when the intervener filed his application for a Community trade mark, the applicant did not have the same rights over the earlier collective trade marks as the intervener and S.C. Rulmenti Barlad had. Accordingly, the premise on which the applicant’s argument is based is false and that argument can only be rejected.

42      Second, the applicant argues that the intervener does not have a legitimate interest in registering the earlier collective trade marks.

43      However, it is understandable, from a commercial point of view, that the intervener wished to extend the protection conferred on it by the Regulament de utilizare al marcii by registering one of its trade marks as a Community trade mark. Indeed, during the period which preceded the filing of the application for registration, the intervener generated turnover from goods marketed under the trade mark URB in several Member States, which was a plausible incentive for filing an application for the registration of a Community trade mark, as was noted in paragraph 33 above. Furthermore, the applicant does not, in its written submissions, disclose any information which could establish that the application for registration at issue was artificial in nature and devoid of logic in commercial terms for the intervener.

44      Third, the applicant maintains that the intervener is in fact trying to exclude it from the market.

45      In that regard, it must be observed that the Court has held that 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 the applicant (judgment in Chocoladefabriken Lindt & Sprüngli, cited in paragraph 31 above, EU:C:2009:361, paragraph 43). It added that 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 (judgment in Chocoladefabriken Lindt & Sprüngli, cited in paragraph 31 above, EU:C:2009:361, paragraph 44).

46      Concerning that point, first, it should be noted that, as was stated in paragraph 38 above, the applicant has no longer been authorised to use the earlier collective marks since 2002. Secondly, it is not disputed that the intervener marketed goods under the trade mark URB in several Member States after the date of registration at issue. Finally, the applicant has not established that it was the intervener’s intention to exclude it from the market. In that regard, the fact that the intervener sent, on 14 September 2010, that is to say after the date of application for registration of the Community trade mark, a letter to the applicant informing it that it would report certain of its practices to the competent authorities if it did not withdraw, in particular, the application for a declaration of invalidity which it had brought against the Community trade mark at issue, does not suffice, in the light of the considerations set out in paragraphs 30 to 45 above, to establish that the intervener acted in bad faith on the date of the application for registration of the Community trade mark.

47      Fourth, the applicant argues that it is not logical to conclude a licensing agreement with a third party regarding a trade mark whose use has been authorised for several years already, unless the intention is, in bad faith, to damage the interest of other companies authorised to use that trade mark. However, that argument has no bearing on the question whether the intervener acted in bad faith when filing the application for registration of the Community trade mark at issue.

48      Fifth, the applicant submits that the intervener acted in bad faith given that he knew that it was one of the companies authorised to use the earlier collective marks. It deduces therefrom that the intervener was aware that the filing of that application for a Community trade mark was an unfair practice involving dishonest behaviour vis-à-vis other users of the collective marks at issue.

49      In that regard and by analogy, it is sufficient to note that the Court has held that the fact that the applicant knows or should know that a third party has long been 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 is not sufficient, in itself, to permit the conclusion that the applicant was acting in bad faith (judgment in Chocoladefabriken Lindt & Sprüngli, cited in paragraph 31 above, EU:C:2009:361, paragraph 40). Since it follows from paragraphs 36 to 47 above that the other grounds put forward by the applicant are not capable of establishing bad faith on the part of the intervener, that fact is not sufficient, in itself, to support such a conclusion.

50      Sixth, the applicant questions the legal basis allowing the intervener to register in his name trade marks which have been protected for 40 years. However, even if raising that question constitutes an argument, the applicant does not establish how such a fact precludes the registration of a Community trade mark on the basis of Regulation No 207/2009.

51      It follows from all of the foregoing that the third plea in law must be rejected.

52      Furthermore, it must be noted that the applicant claims that the Board of Appeal infringed the provisions of Regulation No 207/2009 which govern collective marks by authorising any third party to register a trade mark URB. None the less, the applicant does not specify which provision of that regulation the Board of Appeal infringed. In any event, if the applicant intends, by so doing, to invoke an infringement of Title VIII of Regulation No 207/2009 relating to collective Community trade marks, it must be noted that the present case does not concern a collective Community trade mark, so that such a complaint must be rejected.

53      It follows from all the foregoing that the action must be dismissed.

 Costs

54      Under Article 87(2) 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 the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM. Since the intervener has not applied for costs, he must be ordered to bear his own costs.

On those grounds,

THE GENERAL COURT (Third Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Urb Rulmenti Suceava SA to pay the costs;

3.      Orders Mr Harun Adiguzel to bear his own costs.

Delivered in open court in Luxembourg on 21 May 2015.

[Signatures]

* Language of the case: English.

© European Union
The source of this judgment is the Europa web site. The information on this site is subject to a information found here: Important legal notice. This electronic version is not authentic and is subject to amendment.