Case T‑250/21

Ladislav Zdút

v

European Union Intellectual Property Office

Judgment of the General Court (Tenth Chamber, Extended Composition) of 6 July 2022

(EU trade mark – Invalidity proceedings – EU figurative mark NEHERA – Absolute ground for invalidity – No 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 – 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 – Extent of the reputation of the mark applied for – Unfair advantage taken of the repute of the earlier mark or of the name of a famous person – False impression of continuity or of inheritance with a trade mark with a reputation or with a famous person

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

   (see paragraphs 31-33, 64, 65, 68)

2. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Applicant in bad faith at the time of lodging the trade mark application – Figurative mark NEHERA

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

   (see paragraphs 53, 59, 66, 70, 74, 76, 78, 79)

Résumé

In 2014, Mr Ladislav Zdút, the applicant, obtained from the European Union Intellectual Property Office (EUIPO) the registration of an EU figurative mark NEHERA for goods in the textile industry.

In 2019, Ms Nehera, Mr Nehera and Ms Sehnal filed an application for a declaration of invalidity against that mark, based on the applicant’s bad faith when he filed the application for registration. ( 1 ) They claimed that in Czechoslovakia in the 1930s, their grandfather, Mr Jan Nehera, had established a business marketing clothing and accessories, and had filed and used a national mark identical to the contested mark, enjoying a reputation.

That application was upheld by the Second Board of Appeal of EUIPO. That Board found that the applicant’s intention was to take unfair advantage of the reputation of Mr Jan Nehera and of the former Czechoslovak trade mark and, therefore, that the applicant was acting in bad faith when he filed the application for registration of the contested mark.

The applicant brought an action before the General Court seeking the annulment of that decision of the Board of Appeal of EUIPO.

The Court annuls the contested decision and clarifies the concept of bad faith where that is based on an intention to take unfair advantage of the reputation of an earlier trade mark or of the celebrity of a person’s name.

Findings of the Court

First of all, the Court notes that, in order to assess the applicant's bad faith, it is possible to take into account the extent of the reputation enjoyed by the sign at issue at the time its registration was sought, including where that sign had previously been registered or used by a third party as a trade mark. The fact that use of a sign for which registration is sought would enable the applicant to take unfair advantage of the reputation of an earlier trade mark or sign or even of the name of a famous person is such as to establish bad faith on the part of the applicant. The relevant public for the purpose of assessing the existence of the reputation and of the unfair advantage taken thereof is the average consumer of the goods for which the contested mark was registered.

Next, the Court considers that parasitic behaviour with regard to the reputation of a sign or of a name is, in principle, only possible if that sign or that name actually and currently enjoys a certain reputation or a certain celebrity. In the present case, on the date on which the application for registration of the contested mark was filed, the former Czechoslovak trade mark and Mr Jan Nehera’s name were no longer either registered or protected, or used by a third party to market clothing, or even well known among the relevant public. In that context, the Court specifies that the mere fact that the applicant knew or ought to have known that a third party had, in the past, used a mark similar or identical to the mark applied for is not sufficient to establish the existence of bad faith on the part of that applicant.

In addition, the Court points out that the existence on the part of the relevant public of a link between the contested mark and the former sign cannot be sufficient, on its own, to support a finding that unfair advantage was taken of the reputation of the sign or of the former name. In that regard, it underlines that the applicant made his own commercial efforts in order to revive the image of the former Czechoslovak trade mark and that the mere fact of having referred to that mark and to the historic image of its creator for promotional purposes does not appear to be contrary to honest practices in industrial or commercial matters.

Furthermore, the Court recognises that it cannot be ruled out that, in certain specific circumstances, reuse by a third party of a previously renowned former mark or of the name of a previously famous person may give a false impression of continuity or of inheritance with that former mark or with that person. That could be the case, in particular, where the trade mark applicant presents itself to the relevant public as the legal or economic successor of the holder of the former mark, whereas there is no continuity or inheritance relationship between the holder of the former mark and the applicant. Such a circumstance could be taken into account in order to establish, where appropriate, bad faith on the part of the applicant. In the present case, it does not appear, according to the Court, that the applicant deliberately sought to establish a false impression of continuity or inheritance between his undertaking and that of Mr Jan Nehera.

Lastly, the Court rules on the alleged intention on the part of the applicant to defraud Mr Jan Nehera’s descendants and heirs and to usurp their rights. In that regard, it notes that at the time the application for registration of the contested mark was filed, the former Czechoslovak trade mark and Mr Jan Nehera’s name no longer benefited from any legal protection. Therefore, Mr Jan Nehera’s descendants and heirs did not hold any right that might be susceptible to fraud or to being usurped by the applicant.

Consequently, the Court finds no bad faith on the part of the applicant and annuls the decision of the Second Board of Appeal of EUIPO.

( 1 ) Within the meaning of Article 52(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p 1).