By his action under Article 263 TFEU, the applicant, Mr Sven Butzkies-Schiemann, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 15 September 2023 (Case R 1795/2022-1) (‘the contested decision’).
On 26 February 2021, the intervener, U.S. Corrosion Technologies LLC, filed with EUIPO an application for partial invalidity of the EU trade mark registered on 22 October 2015 for the word sign CorrosionX, following an application filed on 27 June 2015.
The goods covered by the contested mark in respect of which a declaration of invalidity was sought were in Class 2 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, and corresponded to the following description: ‘Preparations for preserving metal against rust’.
The ground relied on in support of the application for invalidity was that referred to in Article 52(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1) (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)), namely bad faith.
On 19 July 2022, the Cancellation Division granted the application for invalidity in respect of all the goods referred to in paragraph 3 above.
On 15 September 2022, the applicant filed a notice of appeal with EUIPO, against the Cancellation Division’s decision.
By the contested decision, the Board of Appeal dismissed the appeal. After admitting, in particular, the admissibility of the intervener’s response, it found that it had been established that, as at the date of the application for registration of the contested mark, the applicant was aware of the intervener’s use of an identical or quasi-identical mark for identical products. It also found that, as at that date, in view of his close commercial relationship with the intervener, which had begun in 2001, the applicant was bound by a duty to act in good faith. It found that the evidence submitted established that the applicant had deliberately passed off his own products as the intervener’s products and that he had breached his duty to act in good faith by applying for registration of the contested mark without the intervener’s consent.
The applicant claims that the Court should:
EUIPO contends that the Court should:
The intervener contends that the Court should:
Given the date on which the application for registration at issue was filed, namely 27 June 2015, which is determinative for the purposes of identifying the applicable substantive law, the facts of the present case are governed by the substantive provisions of Regulation No 207/2009, before its amendment by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Regulation No 207/2009 and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OJ 2015 L 341, p. 21) (see, to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited).
Furthermore, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed by the procedural provisions of Regulation 2017/1001.
Accordingly, in the present case, as regards the substantive rules, the references made to Article 59(1)(b) of Regulation 2017/1001 by the Board of Appeal in the contested decision and by the intervener in the response should be understood as referring to Article 52(1)(b) of Regulation No 207/2009, the terms of which are identical.
The applicant relies on two pleas in law. The first plea alleges infringement of Article 24(1) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), arising from the Board of Appeal’s taking into account of the intervener’s response. The second plea alleges infringement of Article 52(1)(b) of Regulation No 207/2009.
The applicant disputes the taking into account of the intervener’s response, which was filed after the expiry of the statutory two month-period granted to it and which the Board of Appeal refused to extend. He further states that, since it is detrimental to him, the irregular granting by the Registrar of the Boards of Appeal of an extension of that period could not be validated by the Board of Appeal.
EUIPO contends that the first plea in law should be rejected as ineffective. As regards the intervener, it maintains, in essence, that the first plea in law is unfounded.
Article 24(1) of Delegated Regulation 2018/625 provides:
In the present case, it is common ground that the prescribed period for the intervener to file its response expired on 27 January 2023. Before the expiry of that period, the intervener requested an extension until 23 February 2023. The Registry of the Boards of Appeal then invited the applicant to file his observations on that request within the one month-period laid down by Article 3(6) of the Rules of Procedure of the Boards of Appeal. In the meantime, it extended the deadline for filing a response until 25 February 2023. By letters from the Registry of 1 February 2023, the parties were informed of the decision not to grant the request for an extension due to the lack of exceptional circumstances. Those letters state that the intervener’s deadline for filing a response ‘remains valid’.
In the contested decision, the Board of Appeal called into question the existence of a legal basis supporting the extension of time granted by the Registry. However, it considered that that procedural irregularity could not be to the detriment of the intervener, which had to be able to rely on the correctness of the periods set for it. Consequently, the Board of Appeal took into account the response filed by the intervener on 24 February 2023.
It should be noted that, as at the date on which the intervener was informed of the outcome of its request for an extension of time for filing its response, the two-month period provided for in Article 24(1) of Delegated Regulation 2018/625 had already expired. Furthermore, it has not been established, or even claimed, that, following the rejection of its request, the intervener was informed of the withdrawal of the extension that had been granted to it until 25 February 2023 or of the reduction in its duration. In that regard, the statement that the deadline ‘remain[ed] valid’, mentioned in the letter of 1 February 2023 referred to in paragraph 18 above and addressed to it, inasmuch as it could not refer to the statutory deadline already expired, could only be understood as referring to the extended deadline until 25 February 2023.
Thus, the intervener filed its response within the period prescribed for it by EUIPO, even if the latter were unlawful. The Board of Appeal was, therefore, required to admit that response, failing which it would adopt a decision without first enabling the intervener to take a position on all the facts and documents relied on by the applicant in support of his appeal and would thereby infringe the rights of the defence.
Furthermore, although the intervener did indeed benefit from an additional period to file its response despite the lack of exceptional circumstances justifying it, it cannot be claimed that this caused the applicant any harm. Assuming that the intervener submitted additional evidence to that which it would have been able to produce within the statutory two-month period, it must be noted that, pursuant to Article 26(1) of Delegated Regulation 2018/625, it was open to the applicant to seek authorisation to supplement the statement of grounds with a reply. However, it has not been argued, nor is it apparent from the documents in the file, that that was the case.
Accordingly, the first plea in law must be rejected as unfounded.
The applicant submits that the Board of Appeal was wrong to find that the intervener had established that the contested mark had been filed in bad faith.
In essence, the second plea is divided into two parts. The first part alleges that the Board of Appeal was wrong not to examine the reliability – which the applicant had contested – of the evidence produced by the intervener in support of the application for invalidity of the contested mark. The second part alleges an error of assessment by the Board of Appeal in that it found that the evidence produced by the intervener was such as to establish that the application for the contested mark had been filed in bad faith.
EUIPO and the intervener contend that the second plea in law is unfounded.
Article 52(1)(b) of Regulation No 207/2009 provides that an EU trade mark is to be declared invalid, on application to EUIPO or on the basis of a counterclaim in infringement proceedings, where the applicant was acting in bad faith when he or she filed the application for the trade mark.
In that regard, it should be noted that, where a concept set out in Regulation No 207/2009 is not defined by that regulation, its meaning and scope must be determined by considering its usual meaning in everyday language, whilst also taking into account the context in which it occurs and the objectives pursued by that regulation (see judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 43 and the case-law cited).
That applies to the concept of ‘bad faith’ referred to in Article 52(1)(b) of Regulation No 207/2009, in the absence of any definition of that concept by the EU legislature.
While, in accordance with its usual meaning in everyday language, the concept of ‘bad faith’ presupposes the presence of a dishonest state of mind or intention, that concept must moreover be understood in the context of trade mark law, which is that of the course of trade. In that regard, Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), Regulation No 207/2009 and Regulation 2017/1001, which were adopted successively, have the same objective, namely the establishment and functioning of the internal market. The rules on the EU trade mark are aimed, in particular, at contributing to the system of undistorted competition in the European Union, in which each undertaking must, in order to attract and retain customers by the quality of its goods or services, be able to have registered as trade marks signs which enable the consumer, without any possibility of confusion, to distinguish those goods or services from others which have a different origin (see judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 45 and the case-law cited).
Consequently, the absolute ground for invalidity referred to in Article 52(1)(b) of Regulation No 207/2009 applies where it is apparent from relevant and consistent indicia that the proprietor of an EU trade mark has filed the application for registration of that mark not with the aim of engaging fairly in competition but with the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties, or with the intention of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark, in particular the essential function of indicating origin recalled in paragraph 30 above (judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 46).
The intention of an applicant for a trade mark, which must, in accordance with the provisions of Article 52(1)(b) of Regulation No 207/2009, be assessed at the time when the mark was filed, is a subjective factor which must, however, be determined objectively by the competent administrative and judicial authorities. Consequently, any claim of bad faith must be the subject of an overall assessment, taking into account all the factual circumstances relevant to the particular case (see, to that effect, judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 47 and the case-law cited).
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, the commercial logic underlying the filing of the application for registration of that sign as an EU trade mark, and the chronology of events leading up to that filing (see judgments of 21 April 2021, Hasbro v EUIPO – Kreativni Dogadaji (MONOPOLY), T‑663/19, EU:T:2021:211, paragraph 38 and the case-law cited, and of 6 July 2022, Zdút v EUIPO – Nehera and Others (nehera), T‑250/21, EU:T:2022:430, paragraph 30 and the case-law cited).
Furthermore, it is for the applicant for a declaration of invalidity who intends to rely on Article 52(1)(b) of Regulation 207/2009 to prove the circumstances which make it possible to conclude that an application for registration of an EU trade mark was filed in bad faith, the good faith of the applicant being presumed until proven otherwise (see judgment of 21 April 2021, MONOPOLY, T‑663/19, EU:T:2021:211, paragraph 42 and the case-law cited).
Where EUIPO finds that the objective circumstances of the particular case which were relied on by the applicant for a declaration of invalidity may lead to the rebuttal of the presumption of good faith which the proprietor of the mark at issue enjoys when he or she files the application for registration of that mark, it is for the proprietor of that mark to provide plausible explanations regarding the objectives and commercial logic pursued by the application for registration of that mark (judgment of 21 April 2021, MONOPOLY, T‑663/19, EU:T:2021:211, paragraph 43).
It is in the light of those considerations that the second plea in law must be examined.
The applicant submits that the Board of Appeal was required, before deciding on whether he acted in bad faith at the time when the application for registration of the contested mark was filed, to assess the reliability of the facts, arguments and evidence submitted by the intervener, which he had specifically challenged. He reproduces in the application extracts from the statement setting out the grounds of his appeal before the Board of Appeal, containing the arguments submitted in that regard. The applicant argues that the unreliability of some of the evidence forwarded by the intervener affects the overall evidential value of the facts, arguments and evidence provided by it.
EUIPO, supported in essence by the intervener, contends that the arguments submitted in support of the first part of the second plea in law are ineffective.
At the outset, it should be noted that, as the applicant states, three of the seven invoices sent by the intervener to the company Scandex which he managed, produced by the intervener in support of the application for invalidity, bear the same number. However, even though the applicant had already noted that those invoices’ numbers were identical before the adjudicating bodies of EUIPO, it must be stated that he does not draw any conclusions therefrom. In particular, he does not deny that he placed the orders that generated the three invoices at issue.
Furthermore, in the first place, the applicant maintains that, during the administrative phase, he produced the original version and the English translation of a test report of the product Corrosion X Heavy Duty marketed by the company Scandex and that the version of that report produced by the intervener was falsified in order to make it appear that that product was in fact marketed by it.
It must be stated that the Board of Appeal noted the existence of contradictions between the two versions of the test report at issue produced by the parties. However, it relied on that test report solely in order to find that it was not such as to establish genuine use by the applicant of a registered mark, because the request for testing was dated 24 February 2003, namely before the applicant’s application to register a German mark CorrosionX in his name. That date is identical in both versions of that test report. It is, therefore, not affected by the abovementioned contradictions.
In the second place, the applicant argues that the intervener incorrectly claimed that the numbers covered by the NATO codification system were allocated exclusively to it. In his view, the numbers depend on the characteristics of the products, regardless of their commercial origin. Thus, contrary to what the intervener claims, he did not misuse the numbers allocated to it.
However, it must be stated that, in the contested decision, the Board of Appeal did not rely on any alleged misuse, by the applicant, of references which allegedly had been exclusively granted to the intervener. It merely found that the applicant had used, in the context of the marketing of his products, references granted by the US authorities, such as numbers covered by the NATO codification system, thus suggesting that his products were of US origin, whereas he claimed to develop and manufacture them in Germany. The Board of Appeal also expressly noted that that finding was independent of whether the applicant had the right to use those references.
In the third place, the applicant argues that he has demonstrated that the price list of 1 January 2014, claimed by the intervener, was in fact his own. He claims to have established that that price list included, first, a series of pictures, which had always been used exclusively by him and, secondly, certain products which he alone marketed. Those arguments were not, however, considered by the Board of Appeal.
In that regard, it is sufficient to note that the Board of Appeal, while noting the parties’ disagreement as to the commercial origin of the price list drawn up on 1 January 2014, submitted by the intervener, decided not to rely on that list in order to rule on the existence of bad faith on the part of the applicant as at the date on which the contested mark was filed.
In the fourth place, it must be stated that the contention of falsification of documents by the intervener specifically concerns one document, namely the test report of the product Corrosion X Heavy Duty. The applicant’s further contentions seek to call into question the truthfulness of two assertions made by the intervener concerning, first, the commercial origin of a price list, in a context where the applicant and the intervener sold, inter alia, identical products, and, second, the nature of the numbers relating to the NATO codification system. In those circumstances, in the absence of any evidence produced by the applicant capable of calling into question or, at the very least, of raising doubts as to the authenticity or reliability of all the other evidence produced by the intervener, he is not justified in maintaining that his contentions were such as to invalidate the evidential value of all the facts, arguments and evidence produced by the intervener.
Accordingly, since the Board of Appeal did not intend to base its decision on the allegedly falsified or erroneous evidence submitted by the intervener, it was not required to rule on their authenticity or truthfulness. It follows that the applicant’s arguments seeking to call into question the reliability of the version of the test report produced by the intervener and of the latter’s claims concerning the numbers covered by the NATO codification system and the price list drawn up on 1 January 2014 have no bearing on the lawfulness of the contested decision. They must, therefore, be rejected as ineffective.
Consequently, the first part of the second plea in law must be rejected.
In the present case, the Board of Appeal’s assessment of the applicant’s bad faith is based on the analysis, first, of his knowledge of the use of a sign identical to that of the contested mark covering products identical to those covered by that mark and, secondly, of his intention as at the date on which the application for registration of that mark was filed.
The Board of Appeal found that, in the 1990s, the intervener and its predecessor had used a sign identical or almost identical to the contested mark to designate goods identical to those covered by that mark. It also noted that the intervener had obtained registration, first, in 2002, of the US mark CORROSION X, which was cancelled in 2009, and then in 2013, of the US mark CORROSIONX. Furthermore, the Board of Appeal noted that the applicant had stated, on 19 June 2018, that since 2001 he had had a licence to use the ‘mark CorrosionX’ granted by the intervener and that he had been authorised to use that mark for the purposes of distributing three of the intervener’s products and six of his own products.
The Board of Appeal inferred from this that the applicant was clearly aware, as at the time of the application to register the contested mark, of the use by the intervener, within the European Union, of a ‘sign CorrosionX’ designating identical goods. In that regard, the Board of Appeal recalled that the use of a trade mark under licence was deemed to be use by its proprietor. It also noted that that knowledge of the use of that sign was confirmed by the exchanges of emails from 2012 to 2015 between the intervener and the applicant.
The applicant does not deny that he had a commercial relationship with the intervener through the Scandex company which he managed. He admits that he bought, from 2001, the intervener’s products bearing the sign CorrosionX with a view to selling them to his customers. Thus, whatever the exact nature of his commercial relationship with the intervener, it is clear that, as at the date on which the application for registration of the contested mark was filed, the applicant was aware of the intervener’s use of the identical or quasi-identical sign CorrosionX for products identical to those covered by that mark.
The applicant maintains, however, that the intervener’s sign had never been used by the intervener in the European Union as at the date on which the application for the contested mark was filed. He states that the intervener only filed an application for an EU trade mark on 8 May 2018, that is to say after the filing of the application for the contested mark, and that the registration of the mark CORROSION X in the United States in favour of intervener, applied for on 4 February 2002, was cancelled on 30 May 2009. The applicant infers from this that, in the absence of the intervener holding a registered trade mark, no licensing agreement could have been granted to him and that, therefore, his use of the sign CorrosionX could not be considered as use by the intervener.
First, in so far as the applicant relies on the absence of an earlier mark registered in favour of the intervener, it should be borne in mind that the EU trade mark system is based on the principle, laid down in Article 8(2) of Regulation No 207/2009 (now Article 8(2) of Regulation 2017/1001), that an exclusive right is granted to the person who is first to file. In accordance with that principle, a mark may be registered as an EU trade mark only in so far as it is not precluded by an earlier mark, whether an EU trade mark, a trade mark registered in a Member State or by the Benelux Office for Intellectual Property, a trade mark registered under international arrangements which have effect in a Member State or a trade mark registered under international arrangements which have effect in the European Union. By contrast, without prejudice to the possible application of Article 8(4) of Regulation No 207/2009 (now Article 8(4) of Regulation 2017/1001), the mere fact that a non-registered mark is used by a third party does not preclude an identical or similar mark from being registered as an EU mark for identical or similar goods or services (see judgment of 29 June 2017, Cipriani v EUIPO – Hotel Cipriani (CIPRIANI), T‑343/14, EU:T:2017:458, paragraph 23 and the case-law cited).
However, the application of that principle is qualified, inter alia, by Article 52(1)(b) of Regulation No 207/2009, under which an EU trade mark may be declared invalid where the applicant was acting in bad faith when he or she filed the application for registration of the trade mark (see judgment of 29 June 2017, CIPRIANI, T‑343/14, EU:T:2017:458, paragraph 24 and the case-law cited). In the case of an application for a declaration of invalidity based on that provision, there is no requirement that the applicant for that declaration be the proprietor of an earlier mark for identical or similar goods or services (judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 53; see also, to that effect, judgment of 28 October 2020, Target Ventures Group v EUIPO – Target Partners (TARGET VENTURES), T‑273/19, EU:T:2020:510, paragraph 30).
It follows that, as the Board of Appeal found in essence in paragraph 63 of the contested decision, the fact that, as at the date on which the application for registration of the contested mark was filed, the intervener was not the proprietor of a mark registered within the European Union or elsewhere is not decisive.
Secondly, the applicant disputes the Board of Appeal’s assertion that the intervener made use of the sign CorrosionX on the internal market, which arose from his use of the sign under the licence granted to him.
In that regard, it should be borne in mind that there may be situations where the application for registration of a trade mark is liable to be regarded as having been filed in bad faith notwithstanding the fact that, at the time of that application, there was no use by a third party on the internal market of an identical or similar sign for identical or similar goods (judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 52).
Therefore, the circumstance, assuming it is established, that the Board of Appeal was wrong to consider – as the wording of the applicant’s statement of 19 June 2018 had invited it to do (see paragraph 50 above) – that the applicant had been granted a licence to use the mark CorrosionX by the intervener is not decisive.
In any event, it is common ground that the applicant was reselling the intervener’s products bearing the sign CorrosionX in Germany. That sign affixed to the intervener’s products was, therefore, used in the territory of the European Union.
It follows that the Board of Appeal was right to find that the applicant was aware of the intervener’s use of the sign CORROSION X or CORROSIONX designating identical products. However, since such knowledge is only one relevant factor among others to be taken into consideration in the context of the overall assessment carried out under Article 52(1)(b) of Regulation No 207/2009 (see paragraph 33 above), the applicant’s intention at the time when the application for registration of the contested mark was filed should also be taken into account.
The Board of Appeal found that the commercial relationship between the applicant and the intervener from 2001 to 2018, in the context of which the applicant considered himself to be a distributor of the intervener, justified the existence of a duty on the applicant to act in good faith towards the intervener. The Board of Appeal noted that the intervener had started using the sign CORROSION X in 1992 and that it had obtained registration of the corresponding mark in the United States on 4 February 2002. The Board of Appeal also found that there were similarities between the price list for 2004 of the company Scandex, managed by the applicant, and the price list of the intervener for 2002, such as the mention of identical stock numbers, identical products and an identical image whose metadata indicated that the intervener was the owner. The Board of Appeal noted that the applicant had used certain data suggesting the US origin of the products that he marketed and that he had not contested the intervener’s assertion that the customer list on his website was composed exclusively of its customers. Furthermore, the Board of Appeal rejected the applicant’s argument that he had applied, from 2004, for registration of an identical German mark, on the ground that, as at that date, he had already begun to distribute the intervener’s products.
The Board of Appeal concluded from this that the applicant had deliberately intended to pass off his goods as those of the intervener and that the application for registration of the contested mark had been filed in breach of the duty to act in good faith and of honest commercial practices and revealed the applicant’s bad faith.
In essence, the applicant puts forward two complaints. First, he disputes the Board of Appeal’s assessment that he was bound by a duty to act in good faith towards the intervener. He maintains that he only had a conventional buyer-seller commercial relationship with it, which could not serve as a basis for an action for invalidity based on bad faith, that he only purchased the intervener’s products to a very limited extent, that he was not its agent, representative or distributor, and that he did not hold a licence granted by it. Secondly, the applicant submits that his genuine use of the contested mark, which is part of the continuation of use of the identical German mark since 2004, is such as to exclude his bad faith as at the date on which the application for registration of the contested mark was filed. He argues that it is as at that date that the existence of bad faith must be assessed and not at the time of filing of the application for registration of the German trade mark. He further argues that his application for invalidity of the EU trade mark registered in favour of the intervener, which was only intended to protect the contested mark, is not such as to establish his bad faith.
With regard to the first complaint, it should be borne in mind that the contractual relations between the parties prior to the filing of the contested trade mark may provide evidence of the existence of bad faith on the part of the applicant (see judgment of 25 January 2023, Zielonogórski Klub Żużlowy Sportowa v EUIPO – Falubaz Polska (FALUBAZ), T‑703/21, not published, EU:T:2023:19, paragraph 50 and the case-law cited; see also, to that effect, judgment of 11 July 2013, SA.PAR. v OHIM – Salini Costruttori (GRUPPO SALINI), T‑321/10, EU:T:2013:372, paragraph 28).
In the present case, it is common ground that the applicant and the intervener had, since 2001, established a commercial relationship, the exact nature of which is, however, disputed.
In that regard, it must be stated that, in the first place, the applicant described himself, as managing director of the company Scandex, as being the distributor in Germany of the intervener’s products sold under the mark CorrosionX. That distributor status appears, first, in an email of 8 June 2013, sent by the applicant to a member of the intervener’s staff and suggesting the publication of a press release reporting on that collaboration and, secondly, in the observations of the company Scandex of 19 June 2018, produced in the context of previous invalidity proceedings in respect of the contested mark brought by the intervener. In his observations, the applicant states, in particular, that the company Scandex has been distributing, since 2001, three of the intervener’s products bearing the mark CorrosionX, as well as six other products, and that it was authorised to use that mark by the intervener’s managing director.
In the second place, the contractual relations between the applicant, through the company Scandex, and the intervener are confirmed by invoices and exchanges of emails. First, this concerns seven invoices sent by the intervener to the Scandex company from 29 August 2008 to 19 December 2013 and relating to the purchase of the products CorrosionX and CorrosionX Heavy Duty. Secondly, this relates to 11 email exchanges between the intervener and the Scandex company from 22 February 2012 to 26 March 2015 relating, in particular, to orders of the products CorrosionX and CorrosionX Heavy Duty.
In the third place, it is not disputed that the picture representing the intervener’s products, which appeared on its website on 25 November 2002, appears on the applicant’s price list.
It follows that it is established that the applicant, via the company Scandex, and the intervener entered into a contractual commercial relationship over a substantial period, from 2001 to 2018, in the context of which the company Scandex obtained supplies of products bearing the mark CorrosionX from the intervener, with the result that it considered itself to be its distributor in Germany. In that context, and without there being any need to rule on either the scale of the quantities purchased or the exact nature of the contractual relationship thus established, it must be held that the Board of Appeal did not make an error of assessment in finding that that commercial relationship was sufficiently close to give rise to a reciprocal duty to act in good faith.
Accordingly, the first complaint must be rejected as unfounded.
As regards the second complaint, it should be noted at the outset that, while criticising the Board of Appeal for having taken into account, for the purposes of assessing bad faith, facts well before the date of the application for registration of the contested mark, namely 27 June 2015, the applicant relies on genuine use of the German mark registered in his favour in 2004.
In that regard, as stated by the applicant himself, the filing of the contested mark is part of a commercial strategy aimed at extending the protection of the German mark registered in his favour in 2004. Therefore, while the applicant has not provided any evidence capable of establishing that that filing met objectives different from those of the filing of the German mark, the Board of Appeal was right to take into account, for the purposes of assessing bad faith, the circumstances surrounding the application for registration of the latter mark and the commercial logic underlying it.
Furthermore, as regards the chronology of events leading to the filing of the contested mark, it is common ground that the intervener had used the sign CORROSION X for anti-corrosion lubricants in the United States since the early 1990s and that it had filed an application for registration of a mark on 4 February 2002. The mark CORROSION X was registered on 22 October 2002 and later cancelled on 30 May 2009. A new application for registration in the United States was filed on 3 May 2012. That was granted on 1 January 2013. It was only subsequently, on 27 June 2015, that the applicant filed the application for registration of the contested mark.
In that context, the applicant cannot properly rely on genuine use of the German mark, registered in 2004, and then of the contested mark, since those uses are subsequent to the use of the identical or quasi-identical sign that had been made by the intervener from the beginning of the 1990s, of which the applicant was perfectly aware as a reseller of the products covered by that sign. The use of the applicant’s marks cannot, therefore, exclude his bad faith as at the date of the application for registration of the contested trade mark.
For the same reasons, the applicant is not justified in claiming that the fact that he filed an application for invalidity of the EU trade mark CorrosionX, itself filed by the intervener on 8 May 2018, was such as to exclude his bad faith.
Accordingly, the second complaint must be rejected as unfounded.
In those circumstances, whereas the Court, like the Board of Appeal, finds, first, that the applicant has not proven that he had been authorised by the intervener to use the mark CorrosionX and, secondly, that he does not deny that he used, for the purposes of marketing his products, US references used by the intervener and a list of its customers, it must be held that the applicant has not established that the Board of Appeal had made an error of assessment in finding, in the light of the facts and their chronology, that the application for registration of the contested mark had been filed in bad faith.
Accordingly, the present part of the second plea in law and, consequently, the second plea in law in its entirety must be rejected.
In the light of all of the foregoing, the action must be dismissed.
Under Article 134(1) 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, he must be ordered to pay the costs incurred by the intervener, in accordance with the form of order sought by the latter. By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened, EUIPO must be ordered to bear its own costs, since no hearing has been organised.
