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Document 62022TJ0339
Judgment of the General Court (Second Chamber) of 7 June 2023.
Chocolates Lacasa Internacional, SA v European Union Intellectual Property Office.
EU trade mark – Invalidity proceedings – EU figurative mark Conguitos – Earlier EU word mark Conguitos – Absolute ground for invalidity – Bad faith – Article 52(1)(b) of Regulation (EC) No 207/2009 (now Article 59(1)(b) of Regulation (EU) 2017/1001) – Relative ground for invalidity – Unfair advantage taken of the distinctive character or repute of the earlier mark – Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001) – Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001).
Case T-339/22.
Judgment of the General Court (Second Chamber) of 7 June 2023.
Chocolates Lacasa Internacional, SA v European Union Intellectual Property Office.
EU trade mark – Invalidity proceedings – EU figurative mark Conguitos – Earlier EU word mark Conguitos – Absolute ground for invalidity – Bad faith – Article 52(1)(b) of Regulation (EC) No 207/2009 (now Article 59(1)(b) of Regulation (EU) 2017/1001) – Relative ground for invalidity – Unfair advantage taken of the distinctive character or repute of the earlier mark – Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001) – Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001).
Case T-339/22.
Court reports – general
ECLI identifier: ECLI:EU:T:2023:308
Judgment of the General Court (Second Chamber) of 7 June 2023 –
Chocolates Lacasa Internacional v EUIPO – Esquitino Madrid (Conguitos)
(Case T‑339/22) ( 1 )
(EU trade mark – Invalidity proceedings – EU figurative mark Conguitos – Earlier EU word mark Conguitos – Absolute ground for invalidity – Bad faith – Article 52(1)(b) of Regulation (EC) No 207/2009 (now Article 59(1)(b) of Regulation (EU) 2017/1001) – Relative ground for invalidity – Unfair advantage taken of the distinctive character or repute of the earlier mark – Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001) – Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001))
1. |
Acts of the institutions – Temporal application – Substantive rule – Criteria for application (see paragraph 12) |
2. |
EU trade mark – Surrender, revocation and invalidity – Relative grounds for invalidity – Existence of an earlier identical or similar mark enjoying a reputation – Extension of protection of earlier mark with a reputation to dissimilar goods or services – Aim (Council Regulation No 207/2009, Arts 8(5) and 53(1)(a)) (see paragraph 16) |
3. |
EU trade mark – Surrender, revocation and invalidity – Relative grounds for invalidity – Existence of an earlier identical or similar mark enjoying a reputation – Extension of protection of earlier mark with a reputation to dissimilar goods or services – Conditions (Council Regulation No 207/2009, Arts 8(5) and 53(1)(a)) (see paragraph 17) |
4. |
EU trade mark – Surrender, revocation and invalidity – Relative grounds for invalidity – Existence of an earlier identical or similar mark enjoying a reputation – Extension of protection of earlier mark with a reputation to dissimilar goods or services – Conditions – Link between the marks – Criteria for assessment (Council Regulation No 207/2009, Arts 8(5) and 53(1)(a)) (see paragraphs 18-21) |
5. |
EU trade mark – Surrender, revocation and invalidity – Relative grounds for invalidity – Existence of an earlier identical or similar mark enjoying a reputation – Figurative mark Conguitos and word mark Conguitos (Council Regulation No 207/2009, Arts 8(5) and 53(1)(a)) (see paragraphs 56, 57, 76) |
6. |
EU trade mark – Surrender, revocation and invalidity – Relative grounds for invalidity – Existence of an earlier identical or similar mark enjoying a reputation – Extension of protection of earlier mark with a reputation to dissimilar goods or services – Proof to be adduced by proprietor – Genuine future risk of undue profit or damage (Council Regulation No 207/2009, Arts 8(5) and 53(1)(a)) (see paragraph 59) |
7. |
EU trade mark – Surrender, revocation and invalidity – Relative grounds for invalidity – Existence of an earlier identical or similar mark enjoying a reputation – Extension of protection of earlier mark with a reputation to dissimilar goods or services – Conditions – Taking unfair advantage of the distinctive character or repute of the earlier mark – Concept (Council Regulation No 207/2009, Arts 8(5) and 53(1)(a)) (see paragraphs 60, 61) |
8. |
EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Applicant in bad faith when filing the trade mark application – Concept of bad faith – Scope (Council Regulation No 207/2009, Art. 52(1)(b)) (see paragraphs 67, 68) |
9. |
EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Applicant in bad faith when filing the trade mark application – Burden of proof (Council Regulation No 207/2009, Art. 52(1)(b)) (see paragraph 69) |
10. |
EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Applicant in bad faith when filing the trade mark application – Criteria for assessment – Taking into account all relevant factors at the time of filing of the application for registration (Council Regulation No 207/2009, Art. 52(1)(b)) (see paragraph 70) |
Operative part
The Court:
1. |
Dismisses the action; |
2. |
Orders Chocolates Lacasa Internacional, SA to pay the costs. |
( 1 ) OJ C 284, 25.7.2022.