Trade mark guidelines, Part D Cancellation, Section 2 Substantive provisions

Part D Cancellation Section 2 Substantive provisions

1 General Remarks

1.1 The grounds for cancellation

Pursuant to Article 63(1) EUTMR, cancellation proceedings comprise applications for revocation and for declarations of invalidity. The grounds for revocation are established in Article 58 EUTMR. The grounds for invalidity are established in Article 59 EUTMR (absolute grounds), and Article 60 EUTMR (relative grounds). For the temporal scope of application of the grounds for invalidity following the entry into force of Regulation (EU) 2015/2424, see Annex 1 below. In addition to those general grounds, specific grounds can be invoked by a cancellation applicant in support of its request to cancel a collective mark as per Article 81 EUTMR (grounds for revocation) and Article 82 EUTMR (grounds for invalidity), or a certification mark, as per Article 91 EUTMR (grounds for revocation) and Article 92 EUTMR (grounds for invalidity) (see paragraphs 2.5 and 2.6, 3.4 and 3.5 below). Where an EUTM is registered in the name of the proprietor’s agent or representative without its authorisation, the proprietor may request that the Office assigns the EUTM in his or her favour. This is as an alternative relief in a procedure for a declaration of invalidity under Article 60(1)(b) EUTMR in conjunction with Article 8(3) EUTMR. For further details, see paragraph 1.3.3 below and the Guidelines, Part D, Cancellation, Section 1, Cancellation Proceedings. The EUTMDR in Articles 12 to 19, lays down the relevant provisions concerning applications for revocation and for a declaration of invalidity, including the languages of such proceedings, admissibility, substantiation and examination of the merits, etc.

1.2 Inter partes proceedings

Cancellation proceedings are never initiated by the Office itself. The initiative lies with the applicant for cancellation, even in cases based on absolute grounds for invalidity. Article 63(1) EUTMR establishes the conditions that the applicant must fulfil in order to have locus standi for filing an application for revocation or for a declaration of invalidity. For further details, please see the Guidelines, Part D, Cancellation, Section 1, Cancellation Proceedings, paragraphs 2.1 and 4.1.

1.3 The consequences of revocation and invalidity

1.3.1 The legal effect of revocation

According to Article 62(1) EUTMR , in the event of revocation, and to the extent that the rights of the proprietor have been revoked, the EUTM will be deemed not to have the effects specified in the EUTMR as from the date of the application for revocation. An earlier date on which one of the grounds for revocation occurred may be fixed by the Office upon the request of one of the parties (Article 62(1) EUTMR, second sentence). From the wording of the provision, it follows that the Office cannot fix an earlier effective date of revocation ex officio. It is for the interested party to request this. In practice, the request is usually made by the applicant for revocation; however, the reference to "one of the parties" suggests that the EUTM proprietor may also submit such request. The possibility of setting the effects of revocation at an earlier date than that of the application for revocation only applies exceptionally (see, to that effect, 17/12/2020, C‑607/19 , Husqvarna, EU:C:2020:1044, § 41). It constitutes an exception to the general rule. Accordingly, the interested party must duly submit a reasoned and substantiated request. Firstly, the interested party must submit the request for an earlier effective date of revocation together with the application for revocation (in the case of the applicant for revocation) or with its first submissions (in the case of the EUTM proprietor) (29/06/2022, R 1412/2021‑4, PROMAT (fig.), § 24). See also the GuidelinesPart D, Cancellation, Section 1, Cancellation proceedings, point 2.5.3.2. Secondly, the request must include a specific and unambiguous earlier effective date of revocation to allow the Office to determine that date accurately. Otherwise, the revocation will take effect from the date of the application for revocation in compliance with the first sentence of Article 62(1) EUTMR (29/06/2022, R 1412/2021‑4, PROMAT (fig.), § 24; 02/10/2020, R 950/2020‑4, OCTAGON GIRLS, § 20-22; 27/02/2014, R 1720/2013-4 and R 1901/2013‑4, Trilogy Communications, § 15-16). Pursuant to Article 18 EUTMR, when the revocation request is based on Article 58(1) (a) EUTMR, the earlier date must be after the 5-year ‘grace period’ post registration of the EUTM (21/12/2016, C‑654/15, Länsförsäkringar, EU:C:2016:998, § 26). Thirdly, the request for an earlier effective date must be reasoned and supported by facts, arguments and evidence. When exercising its discretion as to whether such an exception from the general rule can be granted, the Office must take into account the factual circumstances of the specific case and weigh up the interests of both parties.

For example, reasoned statements and supporting evidence can concern, inter alia, pending disputes between the parties involving the contested EUTM and the relevant goods and services, such as: parallel national infringement proceedings (see, for instance, 08/10/2012, R 0444/2011‑1, ALPHATRAD (fig.), § 48-50); claims for damages, where the party can avoid liability for an infringement with an earlier effective date; administrative proceedings at national level where the earlier right is the contested EUTM and its validity is examined at the time of the filing of the proceedings or of its substantiation (see, for instance, 26/01/2018,R 890/2017‑5, Auto Bild (fig.), § 81; 14/03/2024, R 1965/2022‑5, finect (fig.), § 119-128). As explained in point 2.2.3, the request for an earlier effective date can only be granted if genuine use has not been proved within the 5-year period preceding the date of application for revocation and within the 5-year period preceding the earlier effective date requested. Proof of genuine use of the contested mark within the 5-year period preceding the requested earlier effective date may only become relevant if there is no proof of genuine use of the contested mark within the 5-year period preceding the date of application for revocation. Where the application for revocation was preceded by a counterclaim for revocation pursuant to Article 128 EUTMR between the same parties and ‘deferred’ by a court pursuant to Article 128(7) EUTMR , the effective date of revocation will be the date of the counterclaim, regardless of whether that date was explicitly requested in the application for revocation before the Office (see point 2.2.3). This is without prejudice to any possible request of an earlier effective date for revocation in the initial counterclaim. For Office practice regarding surrenders when there is a revocation case pending, see the Guidelines,Part D, Cancellation, Section 1, Cancellation proceedings, point 4.3.

1.3.2 The legal effect of invalidity

According to Article 62(2) EUTMR, in the event of a declaration of invalidity, the EUTM will be deemed not to have had, as from the outset, the effects specified in the EUTMR. For Office practice regarding surrenders when there is an invalidity case pending, see the Guidelines, Part D, Cancellation, Section 1, Cancellation Proceedings, paragraph 4.3.

1.3.3 The legal effect of a request for assignment of an EUTM

Pursuant to Articles 21(2)(a) and 163(1)(b) EUTMR, where the EUTM proprietor seeks a declaration of invalidity under Article 60(1)(b) EUTMR in conjunction with Article 8(3) EUTMR, the proprietor may request, as an alternative to invalidating the mark, its assignment in his or her favour if it was registered in the name of its agent or representative without its authorisation. Such a request for assignment is not a separate ground for action, but merely alternative relief. If the claim is successful, the applicant will become the proprietor of the EUTM with retroactive effect to the date of

filing, or where applicable, priority, of the contested EUTM. Such an alternative remedy is not available in other grounds for invalidity.

2 Revocation

2.1 Introduction

According to Article 58(1) EUTMR, there are three grounds for revocation. The EUTM has not been put to genuine use during a continuous period of 5 years.

The EUTM has become generic due to acts/inactivity of its proprietor.

The EUTM has become misleading due to the use made by its proprietor or with its

consent. These grounds are examined in further detail in the paragraphs below. According to Article 58(2) EUTMR, where the grounds for revocation exist for only some of the registered goods and services, the EUTM proprietor’s rights will be revoked only for those goods and services. In addition to these grounds, Article 81 EUTMR lists three further specific grounds on which the rights of the proprietor of an EU collective mark may be revoked. Specific, additional grounds for revocation of EU certification marks are listed in Article 91 EUTMR.

According to Article 58(1)(a) EUTMR, if within a continuous period of 5 years after the EUTM has been registered and before the filing of the application for cancellation the EUTM has not been put to genuine use, within the meaning of Article 18 EUTMR, then the EUTM must be revoked unless there are proper reasons for non-use. Pursuant to Article 58(2) EUTMR, if the EUTM has been used for only some of the goods and services for which it is registered, the revocation will be limited to the goods and services not used. As regards procedural aspects of the submission of the evidence (time limits for submitting evidence, additional rounds for observations and submission of additional relevant evidence, translation of evidence, etc.), see the Guidelines, Part D, Cancellation, Section 1, Cancellation Proceedings. The practice rules applicable to the substantive assessment of proof of use of earlier rights in opposition proceedings are applicable to the assessment of requests for revocation based on non-use (see the Guidelines, Part C, Opposition, Section 7, Proof of use). However, there are a number of particularities to be taken into account in the context of revocation proceedings, which will be examined below.

2.2.1 Burden of proof

Pursuant to Article 19(1) EUTMDR, the burden of proof lies with the EUTM proprietor. It is the proprietor of the mark at issue that is best placed to adduce evidence to support the assertion that its mark has been put to genuine use (22/10/2020, C‑720/18 and C‑721/18, Ferrari, EU:C:2020:854, § 78 and 81-82 and the case-law cited therein). On the other hand, the revocation applicant is not required to make any substantiated submissions to support its application that go beyond the claim that the mark has not been put to genuine use by its proprietor (e.g. to carry out market research concerning the possible use of that mark by its proprietor) (10/03/2022, C‑183/21, Maxxus, EU:C:2022:174, § 38 and 46). The role of the Office is to assess the evidence put before it in the light of the parties’ submissions. The Office cannot determine ex officio genuine use of marks subject to a revocation action. It has no role in collecting evidence itself. Even proprietors of purportedly well-known marks must submit evidence to prove genuine use of their marks.

2.2.2 Genuine use

According to Article 19(1) EUTMDR in conjunction with Article 10(3) EUTMDR, the indications and evidence for submitting proof of use must consist of indications concerning the place, time, extent and nature of use of the contested trade mark for the goods and services for which it is registered. As indicated above, the assessment of genuine use (including place, time, extent and nature of use) is the same in cancellation proceedings and in opposition proceedings. The detailed considerations in the Guidelines, Part C, Opposition, Section 7, Proof of use should be followed. Lack of genuine use for some of the contested goods or services in a revocation case implies the revocation of the registered EUTM for those goods or services. Consequently, great care must be taken when assessing the evidence of use in revocation proceedings regarding the use for the registered (and contested) goods or services.

2.2.3 Period of time to be considered

Pursuant to Article 58(1)(a) EUTMR, the EUTM becomes susceptible to revocation if it has not been put to genuine use within a continuous period of 5 years. However, no person may claim that the proprietor’s rights in an EUTM should be revoked where, during the interval between expiry of the 5-year period and filing of the application, genuine use of the trade mark has started or resumed. Further, according to Article 62(1) EUTMR, if the request for revocation is granted, the effective date of revocation is the date of the application for revocation.

It follows from those provisions that the proprietor must prove genuine use of the contested EUTM within the 5-year period preceding the date of the application for revocation (17/12/2020, C-607/19, HUSQVARNA, EU:C:2020:1044, § 35-41). For example, if the EUTM was registered on 01/01/2011, it became susceptible to revocation on 02/01/2016. If the application for revocation was filed on 15/09/2016, the EUTM proprietor would have to prove genuine use of its mark within the period from 15/09/2011 to 14/09/2016. Even in the case where an EUTM has not been put to genuine use in any continuous 5-year period after its registration, it cannot be revoked if genuine use commenced or was resumed before the filing of the application for revocation. However, where this period is no more than 3 months and it can be established that the proprietor started or resumed genuine use of the mark in view of threatening revocation, evidence of this use cannot be taken into account, and the EUTM will have to be revoked. The burden of proof is on the applicant for revocation to prove that it made the EUTM proprietor aware of its intention to file an application for revocation. In no case can evidence of genuine use preceding a continuous 5-year period of non-use be taken into account, regardless of how long-standing that use may have been. If an earlier effective date of revocation is requested pursuant to Article 62(1) EUTMR, this can only be granted (see point 1.3.1 above) if no genuine use of the contested mark has been proved both within the 5-year period preceding the date of application for revocation and within the 5-year period preceding the earlier effective date requested. This follows from the wording of Article 62(1), second sentence, EUTMR, which provides that an earlier effective date for revocation may be set if the ground for revocation ‘occurred’ on that date. However, even if such an earlier effective date is requested, the EUTM proprietor’s prime interest is to prove genuine use of the contested mark within the 5-year period immediately preceding the date of application for revocation. If genuine use of the contested EUTM within this period is proven, the contested mark cannot be revoked at all. Proof of genuine use of the contested mark within the 5-year period preceding the requested earlier effective date may become relevant only if there is no proof of genuine use of the contested mark within the 5-year period immediately preceding the date of application for revocation. If the application for revocation was preceded by a counterclaim for revocation pursuant to Article 128 EUTMR between the same parties and ‘deferred’ by a court pursuant to Article 128(7) EUTMR, the time period for which genuine use must be proven is the 5 years preceding the date of the counterclaim (17/01/2018, T-68/16, DEVICE OF A CROSS ON A SPORT SHOE SIDE (fig.), EU:T:2018:7, § 55-56).

2.2.4 Proper reasons for non-use

The detailed considerations in the Guidelines, Part C, Opposition, Section 7, Proof of use and in particular paragraph 9 should be followed.

An EUTM will be revoked if, as a result of action or inaction on the part of the proprietor, it has become the common name in the trade for a product or service for which it was registered.

2.3.1 Burden of proof

The burden is on the applicant for revocation to prove that the term has become the common name in the trade as a result of either: action, or

inaction

on the part of the proprietor. The Office will examine the facts in accordance with Article 95(1) EUTMR within the scope of factual submissions made by the revocation applicant (13/09/2013, T-320/10, Castel, EU:T:2013:424, § 28). In doing so, it may take into consideration obvious and well-known facts. However, it will not go beyond the legal arguments submitted by the revocation applicant. If a request for revocation is based only on Article 58(1)(b) EUTMR, the trade mark could not then be revoked due to being, for example, against public order and morality.

2.3.2 Point in time to be considered

The applicant for revocation must prove that the trade mark has become the common name in the trade for the product or service in question after the date of registration of the EUTM, although facts or circumstances that took place between application and registration can be taken into account. The fact that the sign was, at the date of application, the common name used in the trade for the goods or services in respect of which registration was sought would only be relevant in the context of an invalidity action.

2.3.3 Relevant public

An EUTM is liable to be revoked in accordance with Article 58(1)(b) EUTMR if it has become the common name for the product or service not just among some but among the vast majority of the relevant public, including those involved in the trade for the product or service in question (29/04/2004, C-371/02, Bostongurka, EU:C:2004:275, § 23, 26). Whether a trade mark has become the common name in the trade for a product or service in respect of which it is registered must be assessed not only in the light of the perception of consumers or end users but also, depending on the features of the market concerned, in the light of the perception of those in the trade, such as sellers (06/03/2014, C-409/12, Kornspitz, EU:C:2014:130, § 28). However, in some

specific circumstances, it might be sufficient that the sellers of the finished product do not inform their customers that the sign has been registered as a trade mark and do not offer their customers assistance at the time of sale, which includes an indication of the origin of the goods for sale (06/03/2014, C-409/12, Kornspitz, EU:C:2014:130, § 23-25, 30).

2.3.4 Common name

A sign is regarded as the ‘common name in the trade’ if it is established practice in the trade to use the term in question to designate the goods or services for which it is registered (see the Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal, Chapter 5, Customary Signs or Indications (Article 7(1)(d) EUTMR)). It is not necessary to prove that the term directly describes a quality or characteristic of the goods or services, but merely that it is actually used in the trade to refer to those goods or services. The distinctive force of a trade mark is always more likely to degenerate when a sign is suggestive or apt in some way, especially if it has positive connotations that lead others to latch on to its suitability for designating not just a particular producer’s product or service but a particular type of product or service (30/01/2007, 1 020 C, Stimulation, § 22, 32 et seq.). The fact that a trade mark is being used as the common name to refer to a specific product or service is an indication that it has lost its ability to differentiate the goods or services in question from those of other undertakings. One indication that a trade mark has become generic is when it is commonly used verbally to refer to a particular type or characteristic of the goods or services. However, this is not in itself decisive: it must be established whether the trade mark is still capable of differentiating the goods or services in question from those of other undertakings. The absence of any alternative term or the existence of only one long, complicated term may also be an indication that a sign has become the common name in the trade for a specific product or service.

2.3.5 Defence for the proprietor

Where the proprietor of the EUTM has done what could reasonably have been expected in the particular case (e.g. organised a TV campaign or placed advertisements in newspapers and relevant magazines), the EUTM cannot be revoked. The proprietor must then check whether its trade mark appears in dictionaries as a generic term; if it does, the proprietor can request from the publisher that in future editions the trade mark will be accompanied by an indication that it is a registered trade mark (Article 12 EUTMR).

If, as a result of use made of the mark by the proprietor or with its consent, the mark is liable to mislead the public, particularly concerning the nature, quality or geographical

origin of the goods or services for which it is registered, the EUTM can be revoked. In this context, quality refers to a characteristic or attribute rather than a degree or standard of excellence.

2.4.1 Burden of proof

The Office will examine the facts in accordance with Article 95(1) EUTMR within the scope of factual submissions made by the revocation applicant (13/09/2013, T-320/10, Castel, EU:T:2013:424, § 28). In doing so, it may take into consideration obvious and well-known facts. However, it will not go beyond the legal arguments submitted by the applicant for revocation. The burden of proof that the mark has become misleading rests on the applicant for revocation, who must further prove that it is the use made by the proprietor that causes the misleading effect. If the use is made by a third party, the burden is on the applicant for revocation to prove that the proprietor has consented to that use, unless the third party is a licensee of the proprietor.

2.4.2 Point in time to be considered

The applicant for revocation must prove that the trade mark has become liable to mislead the public, particularly concerning the nature, quality or geographical origin of the goods or services in question, after the date of registration of the EUTM. If the sign was already deceptive or liable to deceive the public at the date of application, this would be relevant in the context of an invalidity action.

2.4.3 Standards to be applied

The Guidelines contain details of the criteria to be applied when assessing whether an EUTM application complies with Article 7(1)(g) EUTMR (see the Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal, Chapter 8, Deceptive Trade Marks (Article 7(1)(g) EUTMR). The criteria are comparable to those applied in revocation proceedings under Article 58(1)(c) EUTMR.

2.4.4 Examples

A trade mark composed of, or containing, a geographical indication will, as a rule, be perceived by the relevant public as a reference to the place from where the goods originate. The only exception to this rule is where the relationship between the geographical name and the products is manifestly so fanciful (e.g. because the place is not known, and unlikely to become known, to the public as the place of origin of the goods in question) that consumers will not make such a connection. In this regard, the trade mark MÖVENPICK OF SWITZERLAND was revoked because the goods in question were produced (according to the facts) solely in Germany, not in Switzerland (12/02/2009, R 697/2008-1, MÖVENPICK OF SWITZERLAND).

Moreover, where a trade mark containing the word elements ‘goats’ and ‘cheese’ and a figurative element clearly depicting a goat is registered for ‘goats’ cheese’, and use is proven for cheese not made from goats’ milk, the EUTM will be revoked. Where a trade mark containing the word elements ‘pure new wool’ is registered for ‘clothing’ and use is proven for clothing manufactured from artificial fibres, the EUTM will be revoked.

Where a trade mark containing the words ‘genuine leather’ or the corresponding pictogram is registered for ‘shoe wear’ and use is proven for shoes not made of leather, the EUTM will be revoked.

2.5 Additional grounds for revocation of EU collective marks (Article 81 EUTMR)

According to Article 81 EUTMR, in addition to the grounds for revocation provided for in Article 58 EUTMR, the rights of the proprietor of an EU collective mark will be revoked on application to the Office or on the basis of a counterclaim in infringement proceedings, if:

1. the proprietor does not take reasonable steps to prevent the mark being used in a manner incompatible with the conditions of use, where these exist, laid down in the regulations governing use, amendments to which have, where appropriate, been mentioned in the Register;

2. the proprietor of the EU collective mark uses it in such a way that it becomes liable to mislead the public as regards the character or significance of the mark, in particular, if it is likely to be taken to be something other than a collective mark, as stated in Article 76 EUTMR;

3. the amended regulations do not satisfy the requirements of Article 75 EUTMR or involve one of the grounds for refusal referred to in Article 76 EUTMR, but the amendment has been mentioned in the Register in breach of the provisions of Article 79(2) EUTMR, unless the proprietor of the mark, by further amending the regulations governing use in order to comply with the requirements of those provisions.

2.6 Additional grounds for revocation of EU certification marks (Article 91 EUTMR)

According to Article 91 EUTMR, in addition to the grounds for revocation provided for in Article 58 EUTMR, the rights of the proprietor of an EU certification mark will be

revoked on application to the Office or on the basis of a counterclaim in infringement proceedings, where any of the following conditions is fulfilled: 1. the proprietor carries on a business involving the supply of goods or services of the kind certified, in breach of Article 83(2) EUTMR; 2. the proprietor does not take reasonable steps to prevent the mark being used in a manner that is incompatible with the conditions of use laid down in the regulations governing use, amendments to which have, where appropriate, been mentioned in the Register; 3. the manner in which the mark has been used by the proprietor has caused it to become liable to mislead the public in the manner referred to in Article 85(2) EUTMR;

4. an amendment to the regulations governing use of the mark has been mentioned in the Register in breach of Article 88(2) EUTMR, unless the proprietor of the mark, by further amending the regulations governing use, complies with the requirements of that Article.

3 Absolute Grounds for Invalidity

An EUTM can be declared invalid if, at the time of its application, an objection could have been raised under any of the grounds listed in Article 7 EUTMR.

3.1.1 Burden of proof

The purpose of invalidity proceedings is, inter alia, to enable the Office to review the validity of the registration of a trade mark and to adopt, where necessary, a position that it should have adopted of its own motion in the registration process in accordance with Article 42(1) EUTMR (30/05/2013, T-396/11, Ultrafilter International, EU:T:2013:284, § 20). Article 95(1) EUTMR, second sentence, explicitly states that in invalidity proceedings pursuant to Article 59 EUTMR, the Office will limit its examination to the grounds and arguments submitted by the parties. The EUTM enjoys a presumption of

validity and it is for the invalidity applicant to invoke before the Office the

specific facts that call the validity of a trade mark into question (13/09/2013, T-320/10, Castel, EU:T:2013:424, § 27-29). In particular, when the application for invalidity is based on multiple absolute grounds, the applicant must duly reason and support its application in relation to each of the grounds invoked (19/10/2022, T‑486/20, Swisse (fig.), EU:T:2022:642, § 67). See Guidelines, Part D, Section 1, Cancellation Proceedings, point 3.2.

Consequently, the Office will examine the facts in accordance with Article 95(1) EUTMR, second sentence, within the scope of factual submissions made by the applicant for the declaration of invalidity (13/09/2013, T-320/10, Castel, EU:T:2013:424, § 28). In doing so, it may take into consideration obvious and well-known facts. However, it will not go beyond the grounds and arguments submitted by the applicant for the declaration of invalidity (19/10/2022, T‑486/20, Swisse (fig.), EU:T:2022:642, § 78). One of the arguments that the EUTM proprietor may put forward against the invalidity applicant’s claim is evidence that the EUTM has acquired distinctive character following use. See point 3.2 below.

3.1.2 Points in time to be considered

The General Court has held that whether a trade mark should be registered or should be declared invalid must be assessed on the basis of the situation at the date of its application, not of its registration (03/06/2009, T-189/07, Flugbörse, EU:T:2009:172; confirmed by 23/04/2010, C-332/09 P, Flugbörse, EU:C:2010:225). Generally speaking, any developments or events after the date of application or priority date will not be taken into consideration. For example, the fact that a sign has, after the date of application, become the common term used in the trade for the goods or services for which registration was sought is in principle irrelevant for the purposes of examining an invalidity action (it would only be relevant in the context of a revocation action). However, such facts subsequent to the date of application can nevertheless be taken into account where and to the extent that they allow conclusions to be drawn regarding the situation at the date of application for the EUTM. This might be the case, for example, with dictionary extracts that post-date the application date. Unless rapid development of linguistic usage or living conditions (in the sense of social or technical ‘trends’) has taken place after the date of application, words will usually only be listed in dictionaries if their actual use and meaning has been established over a considerable period of time (25/11/2015, T-223/14, VENT ROLL, EU:T:2015:879, § 39).

3.1.3 Standards to be applied

The Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal, contain details of the criteria to be applied when assessing whether an EUTM application complies with Article 7 EUTMR. The criteria are identical to those applied in invalidity proceedings under Article 59(1)(a) EUTMR.

3.2 Defence against a claim of lack of distinctiveness

A trade mark that falls foul of Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b), (c) or (d) EUTMR will not be declared invalid where it has acquired distinctiveness through use (Article 59(2) EUTMR). The provision of Article 59(2) EUTMR is governed by the same logic as Article 7(3) EUTMR and must be interpreted in the same way and

in the light of the same relevant factors (28/06/2019, T-340/18, SHAPE OF A FLYING V GUITAR (3D), EU:T:2019:455, § 64). The distinctive character acquired following use is, in the context of invalidity proceedings, an exception to the grounds for invalidity of Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b), (c) and (d) EUTMR. Since it is an exception, the onus of proof is on the party seeking to rely on it, namely the proprietor of the contested mark. The proprietor of the contested mark is best placed to adduce evidence in support of the assertion that its mark has acquired a distinctive character following the use which has been made of it (e.g. concerning the intensity, geographical extent, duration of use, promotional investment). Consequently, where the proprietor of the contested mark invokes the distinctive character acquired through use, but fails to adduce evidence thereof, the mark must be declared invalid (19/06/2014, joined cases C-217/13 & C-218/13, Oberbank e.a, EU:C:2014:2012, § 68-71). The EUTM proprietor may also invoke the defence of acquired distinctiveness on a subsidiary basis and expressly request the Cancellation Division to decide first on the invoked ground of invalidity (Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b), (c) or (d) EUTMR). The Cancellation Division will normally grant these requests (unless the circumstances dictate otherwise, e.g. where the contested mark should be declared invalid on different grounds) and issue an appealable decision on the ground of invalidity invoked (as allowed under Article 66(2) EUTMR). If this results in a finding that Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b), (c) or (d) EUTMR applies, and once this decision has become final, the adversarial part of the proceedings will be reopened in order to give the EUTM proprietor the opportunity to submit evidence in support of its claim of acquired distinctiveness. The Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal, Chapter 14, Acquired Distinctiveness Through Use (Article 7(3) EUTMR), contain details of the criteria to be applied when assessing whether an EUTM has acquired distinctiveness through use. The proprietor must prove that the trade mark has acquired distinctive character at the latest by the date of application for a declaration of invalidity (05/03/2003, T-237/01, BSS, EU:T:2003:54, § 53). Therefore, evidence of acquired distinctiveness (i) by the application date of the EUTM (or the date of priority where applicable), (ii) between the application date of the EUTM (or the date of priority where applicable) and the date of registration, and (iii) between the date of registration and the date of application for a declaration of invalidity are all relevant.

The EUTMR considers bad faith only as an absolute ground for the invalidity of an EUTM, to be relied on either before the Office or by means of a counterclaim in infringement proceedings. Therefore, bad faith is not relevant in examination

or opposition proceedings (for opposition proceedings, 17/12/2010, T-192/09, Seve Trophy, EU:T:2010:553, § 50). Article 59(1)(b) EUTMR meets the general interest objective of preventing trade mark registrations that are abusive or contrary to honest commercial and business practices. These registrations are contrary to the principle that EU law cannot be extended to cover abusive practices on the part of a trader, which do not make it possible to attain the objective of the legislation in question (23/05/2019, T-3/18 & T-4/18, ANN TAYLOR / ANNTAYLOR et al., EU:T:2019:357, § 33). Whilst Article 8(3) EUTMR is a manifestation of the principle that commercial transactions must be conducted in good faith (see Part C, Opposition, Section 3, Unauthorised Filing by Agents of the TM proprietor (Article 8(3) EUTMR), Article 59(1) (b) EUTMR is the general expression of that principle. Endeavouring to converge trade mark practices, the European Union Intellectual Property Network published a Common Communication on the Common Practice - ‘Trade mark applications made in bad faith’ (CP13) . This section of the Guidelines is in line with CP13.

3.3.1 Burden of proof and relevant point in time for the assessment

In invalidity proceedings pursuant to Article 59 EUTMR, the Office will limit its examination to the grounds and arguments submitted by the parties (Article 95(1) EUTMR, second sentence). In the context of Article 59(1)(b) EUTMR, it is for the applicant for invalidity to establish the circumstances that make it possible to conclude that the contested EUTM was applied for in bad faith. The good faith of the EUTM proprietor is presumed until proven otherwise (23/05/2019, T-3/18 & T-4/18, ANN TAYLOR / ANNTAYLOR et al., EU:T:2019:357, § 34 and the case-law cited therein). As confirmed by the Court, where the Office finds that the objective circumstances of the case may lead to the rebuttal of the presumption of good faith, it is up to the EUTM proprietor to provide plausible explanations on the objectives and commercial logic pursued by the application for registration of the mark. The EUTM proprietor is best placed to provide the information on its intentions at the time it filed the EUTM application and to prove that its intentions were legitimate (21/04/2021, T‑663/19, Monopoly, EU:T:2021:211, § 43-44). Under these circumstances, it is up to the EUTM proprietor to actively exercise its right of defence in light of the facts, evidence and arguments submitted by the invalidity applicant. The relevant point in time for determining whether there was bad faith on the part of the EUTM proprietor is the time of filing of the application for registration (12/07/2019, T-772/17, Café del Mar (fig.), EU:T:2019:538, § 55). As a consequence, the assessment must be made in relation to the goods and services for which protection was sought on the EUTM filing date, even if the

application for invalidity is not directed against all the goods and services applied for or the scope of the EUTM has changed after the filing date (22/03/2023, T-366/21, Coinbase / Coinbase et al., EU:T:2023:156, § 38). Likewise, a finding of bad faith would be regardless of whether the EUTM has been transferred after its filing date. Therefore, in the event of a subsequent transfer of the EUTM, the bad faith assessment must take the intention of the original proprietor into account and not the intention of the current proprietor (16/06/2021, T-678/19, Enterosgel, EU:T:2021:364, § 38). In addition, the following considerations must be noted. Facts and evidence dated prior to the filing can be taken into account in order to

discern the proprietor’s intention at the time of filing the EUTM. These facts may include, inter alia, whether the mark is already registered in a Member State, at the Office or in another jurisdiction, the circumstances under which the mark was created and the use made of it since its creation (see, for instance, 01/02/2012, T‑291/09, Pollo Tropical CHICKEN ON THE GRILL (fig.), EU:T:2012:39, § 57). Facts and evidence dated subsequent to the filing can sometimes be used to

discern the proprietor’s intention at the time of filing the EUTM, in particular, whether the proprietor has used the mark since registration (see, for instance, 23/05/2019, T-3/18 & T-4/18, ANN TAYLOR / ANNTAYLOR et al., EU:T:2019:357, § 126; 16/05/2017, T‑107/16, AIR HOLE FACE MASKS YOU IDIOT (fig.), EU:T:2017:335, § 41).

3.3.2 Concept of bad faith

The concept of bad faith referred to in Article 59(1)(b) EUTMR is an autonomous concept of European Union (EU) law, which must be given a uniform interpretation in the EU (preliminary ruling of 27/06/2013, C-320/12, Malaysia Dairy, EU:C:2013:435). However, it is not defined, delimited or even described in any way in the legislation. It presupposes the presence of a dishonest state of mind or intention, which must be interpreted in light of the purposes of trade mark law. In this regard, the EUTM Regulations 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 (12/09/2019, C-104/18 P, STYLO & KOTON (fig.), EU:C:2019:724, § 45; 29/01/2020, C-371/18, SKY, EU:C:2020:45, § 74). Bad faith relates to a subjective motivation on the part of the EUTM proprietor, such as a dishonest intention or other sinister motive. It involves conduct which departs from accepted principles of ethical behaviour or honest commercial and business practices (14/05/2019, T‑795/17, NEYMAR, EU:T:2019:329, § 23 , T‑82/14, 07/07/2016, LUCEO, EU:T:2016:396, § 28, see also the opinion of Advocate General Sharpston of 11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:148, § 60) . A finding of bad faith is therefore the result of the existence of dishonest intention at the moment the EUTM was filed. The intention of the EUTM proprietor is a

subjective element that has to be determined by reference to objective circumstances (11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 42). Consequently, any claim of bad faith must be the subject of an overall assessment, taking into account all the relevant factors relating to the circumstances of the individual case (preliminary ruling of 27/06/2013, C-320/12, Malaysia Dairy, EU:C:2013:435, § 37).

3.3.3 The facets of bad faith

The ground of bad faith applies where it is apparent from relevant and consistent indicia that the proprietor of an EUTM filed its application for registration not with the aim of engaging fairly in competition, but with the intention of undermining the interests of third parties, in a manner inconsistent with honest practices, 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 (12/09/2019, C‑104/18 P, STYLO & KOTON (fig.), EU:C:2019:724, § 46; 29/01/2020, C‑371/18, Sky, EU:C:2020:45, § 75). Therefore, even though the EUTM Regulations do not require an EUTM proprietor to declare or to show its intent to use a trade mark at the moment of filing the EUTM, bad faith may be found in cases where the EUTM proprietor applied for the registration of a trade mark without any intention to use it for the goods or services for which it is registered, but rather: i) to undermine the interests of third parties in a manner inconsistent with honest practices; ii) for purposes other than those falling within the functions of a trade mark, even if no specific third party(ies) were targeted (29/01/2020, C‑371/18, Sky, EU:C:2020:45, § 81; 11/06/2009, C‑529/07, Lindt Goldhase, EU:C:2009:361, § 44; 07/07/2016, T‑82/14, LUCEO, EU:T:2016:396, § 126). From the above principles set out by the EU case-law, the following two non-exhaustive facets of bad faith can be identified: 1) the misappropriation of the right/s of a third party: where the EUTM proprietor was targeting the interests of a specific third party; 2) the abuse of the trade mark system: where, despite not targeting a specific third party, the EUTM proprietor applied for the EUTM for purposes other than those falling within the essential functions of a trade mark. As the Court clarified, the abuse of the trade mark system recalls the notion of ‘abuse of law’, which is characterised by the fact that, first, despite formal observance of the conditions laid down by the EU rules, the purpose of those rules has not been achieved, and that, second, there is an intention to gain an advantage from those rules by artificially creating the conditions required to obtain it (see, to that effect, 21/04/2021, T‑663/19, MONOPOLY, EU:T:2021:211 § 72; 21/07/2005, C‑515/03, Eichsfelder Schlachtbetrieb, EU:C:2005:491, § 39 and the case-law cited).

3.3.4 Relevant factors for the assessment

As mentioned above, there is no bad faith without a dishonest intention, which must be determined objectively by making an overall assessment of all the factual circumstances relevant to the particular case (12/05/2021, T-167/20, TORNADO (fig.), EU:T:2021:257, § 48). The EU case-law has established a number of relevant factors to be taken into account in the assessment, which are however only examples of a set of elements which may be taken into account for the purposes of deciding whether an EUTM proprietor was acting in bad faith when filing the EU trade mark application (11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 53; 29/06/2017, T-343/14, CIPRIANI / CIPRIANI, EU:T:2017:458, § 28). A non-exhaustive list of these factors is given below. Identity or similarity of the signs: the fact that the EUTM allegedly registered

in bad faith is identical or similar to a sign to which the invalidity applicant refers may be significant for finding bad faith. In this context, when assessing the identity or similarity between the signs, it may not be necessary to carry out a detailed examination of the visual, aural and conceptual similarities between the contested trade mark and the earlier right/s (05/10/2016, T-456/15, T.G.R. ENERGY DRINK, EU:T:2016:597, § 36-38). Also, although there is identity or similarity with an earlier sign in many cases where bad faith is found, likelihood of confusion is not a prerequisite of bad faith (12/09/2019, C-104/18 P, STYLO & KOTON (fig.), EU:C:2019:724, § 51). Finally, identity or similarity of the signs is not in itself sufficient to show bad faith (01/02/2012, T-291/09, Pollo Tropical chicken on the grill, EU:T:2012:39, § 90; 28/01/2016, T-335/14, DoggiS, EU:T:2016:39, § 59-60). Actual or presumed knowledge of the use of an identical or similar sign: the

fact that the EUTM proprietor knew or should have known about the use of an identical or similar sign by a third party for identical or similar products or services may also be significant. There is knowledge, for example: where the parties have been in a business relationship with each other and, as a result thereof, ‘could not ignore, and was probably aware that the invalidity applicant had been using the sign for a long time’ (11/07/2013, T-321/10, Gruppo Salini, EU:T:2013:372, § 25); when the reputation of the sign, even as a ‘historical’ trade mark, is a well-known fact (08/05/2014, T-327/12, Simca, EU:T:2014:240, § 50); or when the identity or quasi-identity between the contested mark and the earlier signs ‘manifestly cannot be fortuitous’ (28/01/2016, T-335/14, DoggiS, EU:T:2016:39, § 60). Knowledge may be presumed to exist (‘must have known’) on the basis, inter alia, of general knowledge in the economic sector concerned or of the duration of use. The longer the use of a sign, the more likely it is that the EUTM proprietor had knowledge of it (11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 39). This knowledge can stem from the fact that both parties operate in the same niche market and/or the goods marketed by both parties come from the same

country of origin (29/09/2021, T‑592/20, Agate / Agate, EU:T:2021:633, § 42-46). Depending on the circumstances of the case, this presumption may apply even if the sign was registered in a non-EU country (28/01/2016, T-335/14, DOGGIS (fig.), EU:T:2016:39, § 64-71). However, knowledge of an identical or similar earlier sign for identical or similar goods or services is not sufficient in itself to support a finding of bad faith (11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 40, 48-49). It always depends on the circumstances of the case (see, for example, 14/02/2012, T-33/11, BIGAB, EU:T:2012:77, § 27). Similarly, the fact that the applicant knows, or should know, that at the time of filing its application, a third party is using a mark abroad that is liable to be confused with the mark whose registration has been applied for, is not, in itself, sufficient to conclude that the applicant is acting in bad faith (preliminary ruling of 27/06/2013, C-320/12, Malaysia Dairy, EU:C:2013:435, § 37). Knowledge or presumption of knowledge of an existing sign is not required where the EUTM proprietor misuses the system with the intention of preventing any similar sign from entering the market (see, for example, the artificial extension of the grace period for non-use in paragraph 3(e) below). Chronology of events: as confirmed by case-law (26/02/2015, T-257/11,

COLOURBLIND, EU:T:2015:115, § 68; 05/10/2016, T-456/15, T.G.R. ENERGY DRINK, EU:T:2016:597, § 28; 11/07/2013, T-321/10, Gruppo Salini, EU:T:2013:372, § 30), this is a relevant factor when assessing bad faith. Since bad faith should be determined by taking into account all the circumstances relevant to the particular case, it is important to analyse, chronologically, the sequence of events that led up to the filing of the contested mark (i.e. the events that preceded the filing date). Furthermore, the analysis of the chronology of events leading up to the filing (or which occurred just after the filing) can also provide information on other factors, for example, on whether the applicant knew or must have known that the claimant was using an earlier identical/similar right (29/09/2021, T-592/20, Agate / Agate, EU:T:2021:633, § 61-63; 28/10/2020, T-273/19, TARGET VENTURES, EU:T:2020:510, § 46). Previous relationship between the parties: the existence of a direct or indirect

relationship between the parties prior to the filing of the EUTM, for example a precontractual, contractual or post-contractual (residual) relationship is a relevant factor in the assessment of bad faith on the part of the EUTM proprietor (01/02/2012, T-291/09, Pollo Tropical chicken on the grill, EU:T:2012:39, § 85-87; 11/07/2013, T-321/10, Gruppo Salini, EU:T:2013:372, § 25-32). In the context of bad faith, this factor must be interpreted broadly to cover all kinds of relationships between the parties, which would imply the existence of reciprocal duties or obligations, including the duties of loyalty and integrity arising from the past or present occupation of certain positions within the other party’s company (11/07/2013, T-321/10, GRUPPO SALINI / SALINI, EU:T:2013:372, § 28; 30/04/2019, T-136/18, K (fig.), EU:T:2019:265, § 68-69; 12/07/2019, T-772/17, Café del Mar (fig.), EU:T:2019:538, § 53-54).

Origin of the sign and its use since creation: the origin or circumstances

under which the word or the figurative elements of the contested trade mark were created, as well as the earlier use (including ‘historical’ use, see 08/05/2014, T-327/12, Simca, EU:T:2014:240, § 60) made of it in business, in particular by competing undertakings, can also constitute a relevant factor. It may provide useful information about the EUTM proprietor’s intention when filing the EUTM application. The circumstances such as who developed/created the logo/sign, and the reasons behind this creation, or whether the trade mark originated from another right of the party and how it was used, can be relevant (30/04/2019, T-136/18, K (fig.), EU:T:2019:265, § 59-69, 83; 23/05/2019, T-3/18 & T-4/18, ANN TAYLOR /ANNTAYLOR et al., EU:T:2019:357, § 89-90; 26/02/2015, T-257/11, COLOURBLIND, EU:T:2015:115, § 73-76; 14/02/2012, T-33/11, BIGAB, EU:T:2012:77, § 22). This assessment should not be limited to use within the EU market, but use outside the EU may also be taken into consideration (28/10/2020, T-273/19, TARGET VENTURES, EU:T:2020:510, § 47). Commercial logic underlying the application: as mentioned above, commercial

logic underlying the filing may be an important circumstance to consider. The lack of honest commercial logic, including business strategy, behind the filing of the contested EUTM can be a relevant factor to determine whether it was filed in bad faith. A lengthy list of goods and/or services does not automatically amount to bad faith. The practice of seeking registration of a mark, not only for the categories of goods and/or services that are marketed at the time of filing the application, but also for other goods/services that are intended to be marketed in the future, is, in principle, legitimate. However, it may be considered as an indicator of bad faith, if it is artificial and there is a lack of honest commercial logic, including business strategy, behind it (14/02/2012, T-33/11, Bigab, EU:T:2012:77, § 25-26; 13/12/2012, T-136/11, Pelikan (fig.), EU:T:2012:689, § 54-55 – in these two cases, bad faith was not found by the General Court; 07/06/2011, T-507/08, 16PF, EU:T:2011:253, § 88-89; 05/07/2016, T-167/15, NEUSCHWANSTEIN, EU:T:2016:391, § 55). The nature of the mark applied for: where the contested EUTM consists of the

entire shape and presentation of a product, the fact that the EUTM proprietor was acting in bad faith at the time of filing might be established where the competitor’s freedom to choose the shape of a product and its presentation is restricted by technical or commercial factors, with the result that the EUTM proprietor is able to prevent its competitors not merely from using an identical or similar sign, but also from marketing comparable products (11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 50). The degree of legal protection of the earlier mark / contested sign: the degree

of inherent or acquired distinctiveness enjoyed by the earlier sign and the contested sign, as well as the degree of reputation, even if this is only residual, is relevant in the assessment of bad faith (08/05/2014, T-327/12, Simca, EU:T:2014:240, § 40, 46 and 49). It applies in cases where the earlier right of a third party (e.g. the applicant for invalidity itself) enjoys some degree of legal protection/recognition (e.g. by means of registration, inherent or acquired distinctiveness, well-known

character, reputation including, for instance, the surviving/residual reputation, as well as in case of prior use) (01/02/2012, T-291/09, Pollo Tropical CHICKEN ON THE GRILL (fig.), EU:T:2012:39, § 54; 11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 51; 08/05/2014, T-327/12, Simca, EU:T:2014:240, § 46, 49, 52-53, 14/05/2019, T-795/17, NEYMAR, EU:T:2019:329, § 50-51; 28/04/2021, T-311/20, Choumicha Saveurs (fig.), EU:T:2021:219, § 27-28, 32-33; 05/10/2016, T-456/15, T.G.R. ENERGY DRINK, EU:T:2016:597, § 30-35, 41). This factor will be especially relevant under the parasitic behaviour scenario, for example, when concluding that the EUTM proprietor’s intention was to take unfair advantage of the reputation of an earlier right, including its surviving/residual reputation (08/05/2014, T-327/12, Simca, EU:T:2014:240, § 40, 46, 49, 56), or to benefit from its high degree of distinctiveness. However, an analysis of the circumstances of the case may lead to the conclusion

that the filing of the contested trade mark is ensuring a wider legal protection for an earlier sign. For instance, if a sign enjoys a reputation at national level and the proprietor applies for an EUTM, the extent of the sign’s reputation might justify the interest in ensuring broader legal protection (11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 51-52). Goods & services/industry: the assessment of this factor must be made in

light of the objective pursued by the bad faith provisions, which is to prevent, in particular, the misappropriation of the right/s of the third party or abuse of the trade mark system (28/01/2016, T-335/14, DOGGIS (fig.), EU:T:2016:39, § 88-90). The comparison of goods and services may not always be necessary when assessing bad faith, and sometimes it could be sufficient to analyse, for example, whether the goods and/or services at issue belong to a neighbouring/related market segment (23/05/2019, T-3/18 & 4/18, ANN TAYLOR / ANNTAYLOR et al., EU:T:2019:357, § 64-65), or expand the assessment to the comparison of the market sector or the area of commercial activity in which the claimant operates (19/10/2022, T-466/21, Lio (fig.) / El Lio (fig.) et al., EU:T:2022:644, § 49-50). The existence of identity or similarity between the goods and/or services at issue need not necessarily be established in order to apply bad faith provisions, and, consequently, bad faith could also be established in those cases where the goods and/or services at issue are dissimilar (19/10/2022, T-466/21, Lio (fig.) / El Lio (fig.) et al., EU:T:2022:644, § 39-41). Likelihood of confusion: in the context of the overall assessment of bad faith and

the specific circumstances of the particular case, it could be relevant to determine whether there is a likelihood of confusion between the contested trade mark and the earlier rights (11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 53). It is important to stress that neither of these factors alone is sufficient to conclude bad faith. A conclusion of bad faith results from a combination of various factors and the interplay between them. This is well illustrated in the examples of bad faith scenarios presented in the next point.

3.3.5 Bad faith scenarios

The facets of bad faith mentioned above comprise different scenarios. A bad faith scenario refers to a concrete situation in which there are several relevant factors and an interplay between them. Examples of typical scenarios for each of the facets are presented below. Parasitic behaviour - this scenario falls under the ‘misappropriation of the right/s of a third party’ facet. It covers situations where, from an analysis of all the facts of the case, it is evident that the contested EUTM was filed with a dishonest intention: a) to free-ride on the reputation (14/05/2019, T-795/17, NEYMAR, EU:T:2019:329, § 51; 19/10/2022, T-466/21, Lio (fig.) / El Lio (fig.) et al., EU:T:2022:644, § 83), including residual reputation (08/05/2014, T-327/12, Simca, EU:T:2014:240) of an earlier right; or b) to benefit from an earlier right regardless of its degree of recognition on the market. This scenario covers cases where the EUTM proprietor, aware of the existence of an earlier right that enjoys some degree of legal protection/recognition on the market, including having a real presence in the market, has filed an EUTM application with the intention of creating an association with or imitating this earlier right, as closely as possible, to benefit from its attractiveness and/or knowledge of it on the market, whatever it may be. This may also happen where the EUTM proprietor aims to create a false impression of continuity or a false link of inheritance between the contested EUTM and a formerly renowned historic trade mark or a previously famous person/ company/earlier right, which is still known to the relevant public. The existence of bad faith under this scenario may be inferred from various factors. However, for this scenario to apply, it will be necessary to establish the EUTM proprietor’s dishonest intention to benefit from the earlier right’s attractiveness and/or knowledge of it on the market. This may derive, for instance, from the goodwill, reputation, success, prestige and/or real presence that the third party’s right has acquired on the market. Breach of a fiduciary relationship – this scenario falls under the ‘misappropriation of the right/s of a third party’ facet. It covers situations where such a relationship existed and gave rise, explicitly or implicitly, to a general duty of trust and loyalty as regards the interests of the rights of a third party. This can be based on any type of agreement or relationship between the parties that imposed on the EUTM proprietor a general duty of trust and loyalty. Defensive registration – this scenario falls under the ‘abuse of the trade mark system’ facet. It refers to situations where the application of the contested EUTM did not pursue a legitimate trade mark function and was only intended to increase the scope of protection of the EUTM proprietor’s other rights by preventing third parties from registering or using identical/similar rights for identical/similar goods and/or services in the future (in relation to all or some of the identified goods and/or services),

without any honest commercial logic (28/10/2020, T-273/19, TARGET VENTURES, EU:T:2020:510). Re-filing – this scenario falls under the ‘abuse of the trade mark system’ facet. As a generale principle, re-filing of a trade mark application is an action that, per se, is not prohibited by law (21/04/2021, T-663/19, MONOPOLY, EU:T:2021:211, § 70). In the context of the assessment under Article 59(1)(b) EUTMR, re-filing in bad faith refers to situations where the repeated filing of a trade mark previously registered is made without any honest commercial logic, but rather to abuse the trade mark system by circumventing the proof of use requirement. It does not refer to situations where a repeated filing follows honest commercial logic such as a new marketing strategy, evolving business needs and/or changes in consumer demands, or to seek registration of a modernised/updated version of its earlier registered trade mark/s (13/12/2012, T-136/11, Pelikan (fig.), EU:T:2012:689, § 35-36) and/or to cover an updated list of goods and/or services (13/12/2012, T-136/11, Pelikan (fig.), EU:T:2012:689, § 56; 21/04/2021, T-663/19, MONOPOLY, EU:T:2021:211, § 75). Speculative purposes/trade mark as an instrument for leverage – this scenario falls under the ‘abuse of the trade mark system’ facet. This refers to situations where the EUTM was not filed to pursue a legitimate trade mark function, but rather to obtain financial compensation that goes beyond the usual financial compensation of market transactions which fall under the market freedom (01/02/2012, T-291/09, Pollo Tropical CHICKEN ON THE GRILL (fig.), EU:T:2012:39), or to be used as a weapon or to obtain a blocking position or some other illegitimate advantage. These scenarios are reflected in many of the case examples presented in the following section.

3.3.5.1 Examples of cases where bad faith was found

Bad faith was found when the purpose of the EUTM applicant was to ‘free-ride’

on the reputation of the invalidity applicant (14/05/2019, T‑795/17, NEYMAR, EU:T:2019:329, § 51) or on the residual reputation of earlier marks (08/05/2014, T‑327/12, Simca, EU:T:2014:240, § 56), even when these marks had lapsed (21/12/2015, R 3028/2014‑5, PM PEDRO MORAGO (fig.), § 25). For instance, in the ‘Simca’ case the finding of bad faith was mostly based on the clear and evident intention to take advantage of the residual reputation of the sign ‘SIMCA’ in the motor vehicle market. This may be done either by creating an association with the earlier marks and/or by competing with the earlier marks if they are re-used by the invalidity applicant (08/05/2014, T‑327/12, Simca, EU:T:2014:240, § 63 and 72). Bad faith was found in a case where the EUTM proprietor had knowledge of use of

the mark by the invalidity applicant in Bulgaria. The parties were direct competitors in Bulgaria in a rather limited market for the sale of automobile tyres. The EUTM proprietor did not present any evidence of commercial activities using the mark and initiated coercive actions against the invalidity applicant shortly after registering the

EUTM. There was no commercial logic underlying the application for the contested trade mark. These factors were found to be indicative of the EUTM proprietor’s intention to hinder others (29/09/2021, T‑592/20, Agate / Agate, EU:T:2021:633, § 45-46, 61, 63, 68, 72-74). Bad faith was found in a case where the EUTM proprietor registered a trade

mark that was identical to an earlier unregistered mark belonging to the invalidity applicant. The two parties had an informal partnership. The invalidity applicant had popularised the sign, and just prior to ending the partnership, the EUTM proprietor registered the mark without the invalidity applicant’s knowledge. There was also no evidence of any transfer of the rights from the invalidity applicant to the EUTM proprietor. Further, there was an agreement between the parties to pay royalties to the invalidity applicant, indicating that the sign in fact belonged to him (12/05/2021, T‑167/20, TORNADO (fig.), EU:T:2021:257, § 57-65, 68-69, 71, 73, 77, 79). Bad faith was found in cases where there was a direct or indirect relationship

between the parties prior to the filing of the EUTM, for example, a pre-contractual, contractual or post-contractual (residual) relationship. The EUTM proprietor’s registration of the sign in its own name was considered a breach of honest commercial and business practices. (01/02/2012, T‑291/09, Pollo Tropical CHICKEN ON THE GRILL (fig.), EU:T:2012:39, § 85-87; 11/07/2013, T‑321/10, GRUPPO SALINI / SALINI, EU:T:2013:372,§ 25-32). Bad faith was found where the EUTM proprietor acted as the legal representative

of a company created by the invalidity applicant. It was considered that the EUTM proprietor, by registering a trade mark in his own name, thereby generating confusion with the earlier sign ‘Café del Mar’ belonging to the company, while being the representative of one of the companies exploiting that sign, and by paying the registration costs with funds from that company, departed from accepted principles of ethical behaviour or honest commercial and business practices and therefore acted in bad faith 12/07/2019, T‑772/17, Café del Mar (fig.), EU:T:2019:538, § 53-55). Bad faith was found where an EUTM proprietor tried to artificially extend the grace

period for non-use by filing a repeat application of an earlier EUTM to intentionally circumvent the obligation to prove use. However, not all cases of repeat filing constitute bad faith. They must be assessed on a case-by-case basis. For example, where the applicant admits that repeat filings were made to avoid furnishing proof of genuine use, bad faith may be found. The critical point is the intention of the applicant at the time the application was made (21/04/2021, T‑663/19, MONOPOLY, EU:T:2021:211, § 49-55, 70, 89, 94). Bad faith was found where the EUTM proprietor made a number of applications for

registration of national trade marks, intending to block applications for similar marks for a period exceeding the six-month period of reflection provided for by Article 34(1) EUTMR amd the five-year grace period provided for by Article 58(1)(a) EUTMR. The intent of these applications was, contrary to the accepted function of a trade mark, solely to block other applications unless financial compensation was received for withdrawing the applications. This conduct was part of an abusive filing strategy and

cannot be regarded as legitimate business activity. It is contrary to the objectives of the EUTMR (07/07/2016, T‑82/14, LUCEO, EU:T:2016:396, 07/09/2022, T‑627/21, Monsoon, EU:T:2022:530; 17/01/2024, T‑650/22, Athlet, EU:T:2024:11). Bad faith was found when a trade mark application was filed after the invalidity

applicant failed to follow through on a proposed collaboration with the EUTM proprietor. Prior to this, the EUTM proprietor had systematically presented use of the mark, ‘Outsource2India’, as being linked to its proposed collaboration with the invalidity applicant. Therefore, bad faith was found, even though the common element was potentially descriptive (13/11/2019, C‑528/18 P, Outsource 2 India (fig.), EU:C:2019:961, § 68-70).

3.3.5.2 Examples of cases where bad faith was not found

Bad faith was not found on the basis of unregistered trade mark ‘BIGAB’ used for

agricultural machinery since 1996 against the registration of the EUTM ‘BIGAB’ for, inter alia, machines, filed in 2005. It was established that the ‘BIGAB’ trade mark was an abbreviation of the name of its owner and was in use since 1991. The EUTM proprietor was the owner of several national marks and decided to apply for an EUTM to protect a mark at both national and EU level. It was a choice dictated by the EUTM proprietor’s usual commercial strategy and should not be interfered with (14/02/2012, T‑33/11, BIGAB, EU:T:2012:77, § 20, 23, 29; in a similar vein, 01/02/2012, T‑291/09, Pollo Tropical CHICKEN ON THE GRILL (fig.), EU:T:2012:39, § 58). The fact that, after successfully registering the EUTM at issue, the EUTM proprietor served a formal notice on other parties to cease using a similar sign in their commercial relations is not in itself an indication of bad faith. This type of request falls within the scope of the rights attached to the registration of an EUTM pursuant to Article 9 EUTMR (14/02/2012, T‑33/11, BIGAB, EU:T:2012:77, § 33). Bad faith was not found because of the length of the list of goods and services set

out in the application for registration (07/06/2011, T‑507/08, 16PF, EU:T:2011:253, § 88). As a rule, it is legitimate for an undertaking to seek registration of a mark not only for the categories of goods and services that it markets at the time of filing the application, but also for other categories of goods and services that it intends to market in the future (14/02/2012, T‑33/11, BIGAB, EU:T:2012:77, § 25; 07/06/2011, T‑507/08, 16PF, EU:T:2011:253, § 88).

However, the registration of a trade mark by an applicant without any intention to use it for the goods and services covered by that registration may constitute bad faith where there is no rationale for the application for registration (29/01/2020, C‑371/18, Sky, EU:C:2020:45, § 77). Bad faith was not found where repeat filings were made because, in accordance

with normal business practice, the EUTM proprietor sought to protect variations of its sign. The fact that the variations were insignificant enough to be unnoticeable to the average consumer does not prove, by itself, that the application was made in bad faith. The prior revocation of a similar EUTM in relation to several classes does

not imply that the new application was made in bad faith (13/12/2012, T‑136/11, Pelikan (fig.), EU:T:2012:689, § 66). Bad faith was not found in a case where the owner was accused of trying to ride

on the coat-tails of a reputed trade mark because there was no surviving reputation in respect of the earlier mark or celebrity status of the earlier mark’s owner at the time of filing. This finding cannot be called into question by the fact that the EUTM proprietor was aware of the past existence and reputation of the former trade mark and its owner. It was found that when the contested mark was filed, the earlier trade mark and the name of its owner (the same as the trade mark) were forgotten by the relevant public and it was the EUTM proprietor himself who had devoted considerable time, effort and money to revive the mark and make the history of its owner and of his business known. Given these circumstances, the mere fact of having referred, for the purposes of promoting the contested mark, to the historic image of the owner of the former trade mark and to the former trade mark as such does not appear to be contrary to honest practices in industrial or commercial matters (the EUTM proprietor did not claim a family tie with the owner of the former trade mark nor did he present himself as his heir or the legal successor of his business). Moreover, by stating that he had revived and resurrected a mark that had flourished in the 1930s, the EUTM proprietor rather suggested an interruption and, therefore, a lack of continuity between the previous activity and his own. Therefore, there was no false impression of continuity or inheritance between the EUTM proprietor’s undertaking and that of the owner of the former reputed trade mark (06/07/2022, T‑250/21, nehera (fig.), EU:T:2022:430, § 59-60, 66, 68, 70). Bad faith cannot be presumed simply because the EUTM proprietor had no

economic activity corresponding to the goods and services at the date of filing the contested mark. The fact that the contested mark was revoked for certain goods and services for lack of genuine use does not mean that the proprietor acted in bad faith when it applied for registration of the mark, especially in the absence of other relevant and consistent evidence. In addition, the registration of a mark for goods in an incorrect class does not in itself demonstrate a dishonest intention (04/09/2024, T‑166/23, DECOPAC, EU:T:2024:584, § 38-41, 43-46). Bad faith was not found where the extension of protection of a sign had sound

commercial logic and was part of a normal business strategy. The lack of use of the mark prior to the filing and not informing the other party could not call into question the commercial logic underlying the filing (13/07/2022, T‑147/21, GUGLER (fig.) / GUGLER FRANCE, EU:T:2022:444).

3.3.6 Extent of invalidity

According to Article 59(3) EUTMR, the absolute grounds for invalidity referred to in Article 59(1) EUTMR may, depending on the circumstances, exist in respect of only some of the goods and services for which the contested mark has been registered.

The invalidity applicant can determine the extent of the invalidity action. If it challenges only some of the goods and services covered by the contested EUTM, the Office will limit its assessment to those goods and services. The extent of a declaration of invalidity based on a finding of bad faith will be determined on the basis of the evidence and arguments provided by the invalidity applicant and will depend on the nature of the specific behaviour constituting bad faith. As explained by the Court, the scope of the invalidity may depend on the EUTM proprietor’s intention at the time of filing, for example, if it was to harm a particular third party (misappropriation of the rights of others) or misuse of the EUTM system. If the EUTM proprietor is targeting a third party, and it is not possible to distinguish the EUTM proprietor’s motives, the registration should be cancelled as a whole. If the EUTM proprietor’s intention was to misuse the EUTM system, the intention may be partly legitimate and partly abusive, therefore justifying the conclusion that the ground for invalidity only exists in respect of some of the goods or services for which the EUTM has been registered (see 28/04/2021, T‑311/20, Choumicha Saveurs (fig.), EU:T:2021:219, § 51, 54-55). For example: where bad faith is found because the contested EUTM was filed with the deliberate

purpose of creating an association with the invalidity applicant (14/05/2019, T‑795/17, NEYMAR, EU:T:2019:329, § 55), the EUTM will normally be declared invalid in its entirety; where bad faith is found because of the absence of any intention to use the trade

mark, the EUTM may be declared only partially invalid if the invalidity applicant cannot adequately establish that this bad faith applies to all the goods and services (29/01/2020, C‑371/18, Sky, EU:C:2020:45, § 81).

3.4 Absolute grounds for invalidity for EU collective marks

Apart from the grounds for invalidity explained above, provided for in Articles 59 and 60 EUTMR, an EU collective mark that has been registered in breach of the provisions of Article 76 EUTMR will be declared invalid on application to the Office in the following cases: where Articles 74 and 75 EUTMR are not satisfied, or where the regulations

governing use are contrary to public policy or to accepted principles of morality; where the public is liable to be misled regarding the character of the significance of

the mark, in particular if it is likely to be taken to be something other than a collective mark. Article 76(3) EUTMR in conjunction with Article 82 EUTMR in fine clarify that where the proprietor amends the regulations of use then meets the requirements of paragraphs 1 and 2 above, such EU collective mark will not be refused.

3.5 Absolute grounds for invalidity for EU certification marks

Article 92 EUTMR states that when an EU certification mark has been registered in breach of Article 85 EUTMR (e.g. the conditions in Articles 83 and 84 EUTMR are not satisfied), it will be declared invalid unless the proprietor amends the regulations governing use, and consequently, these meet the requirements of Article 85 EUTMR.

4 Relative Grounds for Invalidity

4.1 Introduction

Article 60 EUTMR enables proprietors of earlier rights to apply for a declaration of invalidity of an EUTM in a range of situations (grounds), which are detailed below. The same grounds as in opposition proceedings:

○ an earlier trade mark, within the meaning of Article 8(2) EUTMR, is identical or similar to the contested EUTM and covers identical or similar goods and services or is reputed (Article 60(1)(a) EUTMR in conjunction with Article 8(1)(a) or (b) and Article 8(5) EUTMR); ○ a trade mark has been filed without authorisation by an agent or representative of its proprietor (Article 60(1)(b) EUTMR in conjunction with Article 8(3) EUTMR); ○ a non-registered trade mark or other sign used in the course of trade can invalidate an EUTM registration if national legislation allows the proprietor of the earlier non-registered trade mark or another sign to prohibit the use of the subsequent EUTM (Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR); ○ a designation of origin or a geographical indication can invalidate an EUTM registration if EU or national legislation allows the person authorised under the relevant law to exercise the rights arising from a designation of origin or a geographical indication to prohibit the use of the subsequent EUTM (Article 60(1) (d) EUTMR in conjunction with Article 8(6) EUTMR). an additional ground based on another earlier right, to the extent that EU law or

national law (including rights deriving from international agreements having effect in a Member State) entitles the proprietor to prohibit the use of the contested EUTM (Article 60(2) EUTMR), in particular: ○ a right to a name, ○ a right of personal portrayal, ○ a copyright, ○ an industrial property right. These grounds are further developed below (paragraphs 4.2 and 4.3). As in opposition proceedings, the proprietor of the contested EUTM may require the invalidity applicant to submit proof of genuine use of its earlier trade mark. The

particularities regarding the relevant period for assessing genuine use in invalidity proceedings are explained in paragraph 4.4 below. Finally, the EUTMR includes a number of provisions that can be invoked by the EUTM proprietor against an invalidity application, depending on the type of earlier right invoked (e.g. whether or not it is an earlier EUTM or national trade mark). These provisions are dealt with under paragraph 4.5 below.

4.2.1 Standards to be applied

The substantive conditions for considering an earlier right referred to in Article 60(1) EUTMR in conjunction with Article 8 EUTMR as a relative ground for a declaration of invalidity are the same as in opposition proceedings. The practice rules relating to the corresponding ground of opposition should be applied accordingly.

4.2.2 Points in time to be considered

4.2.2.1 For the assessment of enhanced distinctiveness or reputation

In line with opposition proceedings, in invalidity proceedings an invalidity applicant relying on enhanced distinctiveness or reputation must prove that its earlier right has acquired enhanced distinctiveness or reputation by the filing date of the contested EUTM, taking account, where appropriate, of any priority claimed. In addition, the reputation or the enhanced distinctive character of the earlier mark must still exist when the decision on invalidity is taken. In opposition proceedings, due to the short time span between the filing of the EUTM application and the opposition decision, it is normally presumed that the enhanced distinctiveness or reputation of the earlier trade mark still exists at the time of the decision (see the Guidelines, Part C, Opposition, Section 5, Trade Marks with Reputation (Article 8(5) EUTMR)). In invalidity proceedings, however, the time span can be considerable. In this case, the invalidity applicant must show that its earlier right continues to enjoy enhanced distinctive character or reputation at the time the decision on invalidity is taken.

In the event of an application for invalidity based on Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR, the invalidity applicant must show the earlier sign’s use in the course of trade of more than local significance by the filing date of the contested EUTM (or the priority date if relevant). In invalidity proceedings, the applicant also has to prove that the sign was used in the course of trade of more

than local significance at another point in time, namely at the time of filing of the invalidity request. This condition stems from the wording of Article 60(1)(c) EUTMR, which states that an EUTM will be declared invalid ‘where there is an earlier right as referred to in Article 8(4) and the conditions set out in that paragraph are fulfilled’ (05/10/2004, 606 C; 03/08/2011, R 1822/2010-2, BABY BAMBOLINA (fig.), § 15). Once proved, this requirement is considered still to be fulfilled at the time the decision on invalidity is taken unless there is evidence to the contrary (e.g. a company name is invoked but the company has ceased to exist). There are further particularities regarding substantiation and admissibility, which are dealt with in the Guidelines, Part D, Cancellation, Section 1, Cancellation Proceedings.

An EUTM is liable to be declared invalid on the basis of the rights below where use of the trade mark could be prohibited under the EU or national law governing their protection. This is not an exhaustive list of such earlier rights. Article 60(2) EUTMR applies only where the rights invoked are of such a nature that they are not considered typical rights to be invoked in cancellation proceedings under Article 60(1) EUTMR (13/12/2011, 4 033 C, § 12).

4.3.1 A right to a name/right of personal portrayal

Not all Member States protect the right to a person’s name or portrayal. The exact scope of protection of the right will follow from the national law (e.g. whether the right is protected irrespective of the goods and services the contested mark covers). The invalidity applicant will have to provide the necessary national legislation in force and put forward a cogent line of argument as to why it would succeed in preventing the use of the contested mark under the specific national law. A mere reference to the national law will not be considered sufficient: it is not for the Office to make that argument on the applicant’s behalf (05/07/2011, C-263/09 P, Elio Fiorucci, EU:C:2011:452).

4.3.2 Copyright

According to Article 60(2)(c) EUTMR, a European Union trade mark will be declared invalid on application to the Office where the use of such trade mark may be prohibited pursuant to another earlier right under the EU legislation or national law governing its protection, and in particular copyright. Although the EU legislator has harmonised certain aspects of copyright protection (see Directive 2001/29/EC of the European Parliament and of the Council of 22/05/2001 on the harmonisation of certain aspects of copyright and related rights in the information society, OJ L 167, 22/06/2001, pp. 10-19), so far there is no full-scale harmonisation of the copyright laws of the Member States, nor is there a uniform EU copyright. However, all the Member States are bound by the Berne Convention for the Protection of Literary and Artistic Works and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). The invalidity applicant will have to provide the necessary national legislation in force and put forward a cogent line of argument as to why it would succeed under the specific national law in preventing the use of the contested mark. A mere reference to the national law will not be considered sufficient: it is not for the Office to make that argument on the applicant’s behalf (see, by analogy, 05/07/2011, C-263/09 P, Elio Fiorucci, EU:C:2011:452). The notion of copyright protection is applicable irrespective of the goods and services the contested mark covers. It merely requires an unauthorised reproduction or adaptation of the protected work or a part thereof in the contested mark. It follows, that similarity for the purposes of the assessment of likelihood of confusion is not the relevant test to be applied.

4.3.3 Other industrial property rights

Other industrial property rights and prior works at national or EU level, such as a registered European Union design (EUD), may be invoked.

The invalidity applicant will have to provide the necessary national legislation in force and put forward a cogent line of argument as to why it would succeed under the specific national law in preventing the use of the contested mark. A mere reference to the national law will not be considered sufficient: it is not for the Office to make that argument on the applicant’s behalf (see, by analogy, 05/07/2011, C-263/09 P, Elio Fiorucci, EU:C:2011:452).

In the case of an EUD there is no need to prove what protection is given under the law. The Cancellation Division will apply the standards of the applicable design law of the EU.

4.4 Non-use of the earlier mark

According to Article 64(2) and (3) EUTMR, where the earlier mark has been registered for 5 years or more when the application for a declaration of invalidity is filed, the EUTM proprietor may request the proprietor of the earlier mark to submit proof that the earlier mark has been put to genuine use in the EU, in connection with the goods or services for which it is registered, or that proper reasons for non-use exist. According to Article 19(2) EUTMDR in conjunction with Article 10(3) EUTMDR, the indications and evidence of use must establish the place, time, extent and nature of use of the earlier trade mark for the goods and services for which it is registered and on which the application for a declaration of invalidity is based. The practice rules applicable to the substantive assessment of proof of use of earlier rights in opposition proceedings are applicable to the assessment of proof of use in invalidity proceedings (see the Guidelines, Part C, Opposition, Section 7, Proof of use). In particular, when the EUTM proprietor requests proof of use of the earlier rights, the Office will examine whether, and to what extent, use has been proved for the earlier marks, provided this is relevant for the decisionʼs outcome. Finally, there is a particularity to be considered in assessing the proof of use in the context of invalidity proceedings. It concerns the relevant time of use. Pursuant to Article 64(2) EUTMR in conjunction with Article 47(2) EUTMR, in contrast to opposition proceedings, there are two relevant periods during which use has to be established.

The first relevant period applies in all cases where the earlier trade mark had

been registered for over 5 years prior to the application for invalidity: the period of 5 years preceding the date of filing the application for a declaration of invalidity (first relevant period). Additionally, in cases where the earlier trade mark had been registered for at least

5 years at the filing or priority date of the EUTM application ( ) (or equivalent dates in case of an international registration designating the EU ( ), use of that mark must be established within the 5 years preceding (second relevant period): a. the filing date or, where applicable, the priority date (or, for contested EUTM applications filed before 23/03/2016, the date of publication), in the case of a contested EUTM; b. the date of the international registration (INID code 151), the date of the subsequent designation (INID code 891), or, where applicable, the date of priority (INID code 300) (or, for contested international registrations designating the EU filed before 23/03/2016, the first publication date of the contested IR or its subsequent designation in the EUTM Bulletin), in the case of a contested international registration designating the EU. These two relevant periods do not necessarily overlap: they may totally or partially overlap, or follow on from each other (with or without a gap). In the event of an overlap in the periods, proof of use of the earlier mark relating to the overlapping period can be considered for each of the two relevant periods (29/11/2018, C-340/17 P, Alcolock, EU:C:2018:965, § 84).

4.5 Defences against an invalidity application based on relative grounds

4.5.1 Consent to registration

According to Article 60(3) EUTMR, the EUTM may not be declared invalid if the owner of the earlier right consents expressly to the registration of the EUTM before filing the application for a declaration of invalidity. Consent does not have to be given before the date of registration of the EUTM. It is sufficient if it is given before the application for invalidity is filed. For these purposes, the Office will take into account, for instance, a contract to this effect between the parties. Evidence of express consent must take the form of a statement (and not of conduct). The statement must come from the applicant (and not from third parties). The consent must be ‘express’ (and not implicit or presumed) (23/07/2009, R 1099/2008-1,

BRANDY MELVILLE (fig.) / MELVILLE (fig.) et al., § 46). The burden of proof for this consent lies with the EUTM proprietor.

The peaceful coexistence of the marks on the market cannot take the place of the ‘express consent’ of the right holder for the purposes of Article 60(3) EUTMR. Furthermore, the coexistence agreement cannot be interpreted in such a way as to extend beyond its scope without the express consent of the parties (03/06/2015, T-544/12 & T-546/12, PENSA PHARMA, EU:T:2015:355, § 40, 50).

Merely withdrawing an opposition unilaterally does not imply that the opponent consents to the registration of the EUTM application (14/10/2008, R 946/2007-2 & R 1151/2007-2, VISIONIC/Visonic LTD (fig.), § 26). Therefore, the Office will analyse the circumstances under which withdrawal of the opposition has been made (see examples below, namely 03/06/2015, T-544/12 & T-546/12, PENSA PHARMA; 14/10/2008, R 946/2007-2 & R 1151/2007-2, VISIONIC/Visonic LTD (fig.)).

4.5.1.1 Examples rejecting the claim of consent to registration

4.5.1.2 Examples accepting the claim of consent to registration

4.5.2 Acquiescence

According to Article 61 EUTMR, where the proprietor of an earlier EUTM or national trade mark has acquiesced in the use of the contested EUTM for a period of five successive years, while being aware of the use, the contested EUTM is not liable to be declared invalid, unless registration of the later EUTM was applied for in bad faith.

The aim of Article 61 EUTMR is to penalise the proprietors of earlier trade marks that have acquiesced, for a period of five successive years, in the use of a later EUTM while being aware of such use, by excluding them from seeking a declaration of invalidity of that trade mark, which will then therefore be able to coexist with the earlier trade mark (28/06/2012, T-133/09, B. Antonio Basile 1952, EU:T:2012:327, § 32).

The following conditions must be met to cause the start of the limitation period as a consequence of acquiescence (04/10/2018, T-150/17, Flügel / ... Verleiht Flügel et al., EU:T:2018:641, § 31): the contested EUTM must be registered;

the application must have been made in good faith by its proprietor;

the contested EUTM must have been used in the EU (or in the Member State where

the earlier trade mark is protected) during a period of at least five successive years; the invalidity applicant must be actually aware of the use of the contested EUTM

after its registration. All four conditions must be fulfilled. If they are, the limitation on acquiescence will apply only to the contested goods or services for which the later EUTM has been used. The burden of proof is on the proprietor of the contested EUTM. The concept of ‘acquiescence’ implies that, although the invalidity applicant could have stopped the use of the contested mark, it nevertheless remained inactive (22/09/2011, C-482/09, Budweiser, EU:C:2011:605, § 44). This is not the case where there was a licence or distribution relationship between the parties, so that the invalidity applicant could not lawfully oppose use of the sign. The EUTM proprietor must prove actual awareness of the use of the contested EUTM during the 5-year period after its registration. This means that potential awareness or presumption of such awareness are not sufficient to apply the provision (04/10/2018, T-150/17, Flügel / ... Verleiht Flügel et al., EU:T:2018:641, § 34-365). Therefore, the period of limitation as a consequence of acquiescence starts running from the time when the proprietor of the earlier trade mark becomes aware of the use of the later EUTM. That date must necessarily be later than that of registration of the contested EUTM, that is, when the rights in an EUTM are obtained and it is used as a registered trade mark on the market with third parties therefore being aware of its use. It is at this point that the proprietor of the earlier mark has the option of not acquiescing in its use and, therefore, opposing it or seeking a declaration of invalidity of the later trade mark (28/06/2012, T-133/09, B. Antonio Basile 1952, EU:T:2012:327, § 33; 06/06/2013, C-381/12 P, B. Antonio Basile 1952, EU:C:2013:371, § 56; 04/10/2018, T-150/17, Flügel / ... Verleiht Flügel et al., EU:T:2018:641, § 32-33). The proprietor of the contested mark cannot be required to prove, in addition to the invalidity applicant’s awareness of the use of the contested EUTM, that the invalidity applicant was also aware of its registration, for at least 5 years, as an EUTM. The reference in Article 61(1) and (2) EUTMR to acquiescence in the use of a later ‘EUTM’ merely refers to the requirement that the later sign must have been registered as an EUTM for at least 5 years. This is an objective requirement, which is independent of the invalidity applicant’s knowledge (21/10/2008, R 1299/2007-2, Ghibli (fig.), § 41-47). The proprietor of the contested mark must prove use of the contested mark to the extent that it can be established that the proprietor of the earlier mark was actually aware of this use (04/10/2018, T-150/17, Flügel / ... Verleiht Flügel et al., EU:T:2018:641, § 41-42).

Article 61 EUTMR is not applicable when the contested EUTM was filed in bad faith. This exception will only be considered if it is argued and proved by the invalidity applicant.

Article 61 EUTMR does not refer to the possible consequences of acquiescence by a person authorised to exercise the rights arising from a designation of origin or a geographical indication. Therefore, the proprietor of an EUTM cannot rely on acquiescence where an invalidity application is based on an earlier designation of origin or a geographical indication pursuant to Article 8(6) EUTMR.

4.5.2.1 Examples rejecting the acquiescence claim

4.5.2.2 Examples (partially) accepting the acquiescence claim

Annex 1 Grounds for Invalidity: Temporal Scope of Application Following the Entry into Force of Regulation (EU) 2015/2424 on 23 March 2016

1 Absolute Grounds for Invalidity

The general principle is that the Office applies those absolute grounds for invalidity that were laid down in the law to a European Union trade mark (application) — that is, either in Regulation (EC) No 207/2009 or in any other directly applicable legislative text binding the EU and thus the Office — at the date of their filing. Therefore, the new grounds for invalidity, that is, those that have been introduced to the EUTMR by Regulation (EU) 2015/2424, apply only to a European Union trade mark (application) filed on and after 23 March 2016. However, some grounds for refusal and invalidity introduced for the first time by Regulation (EU) 2015/2424 into the EUTMR are, as a matter of law, not new as they had already been applied before 23 March 2016, by virtue of other binding legislative texts of the EU. On this basis, the following distinction applies:

1.1 Grounds for invalidity that applied before 23 March 2016 by virtue of EU regulations other than the CTMR

The following grounds for invalidity introduced for the first time into the EUTMR by Regulation (EU) 2015/2424 apply to European Union trade marks filed before 23 March 2016. Article 7(1)(k) EUTMR: conflict with earlier EU traditional terms for wines

This ground for invalidity was already envisaged in Article 113(2) of Regulation (EU) No 1308/2013 of the European Parliament and of the Council of 17 December 2013 establishing a common organisation of the markets in agricultural products and repealing Council Regulations (EEC) No 922/72, (EEC) No 234/79, (EC) No 1037/2001 and (EC) No 1234/2007 in conjunction with Articles 40 and 41 of Commission Regulation (EC) No 607/2009 of 14 July 2009 laying down certain detailed rules for the implementation of Council Regulation (EC) No 479/2008 as regards protected designations of origin and geographical indications, traditional terms, labelling and presentation of certain wine sector products. Article 7(1)(l) EUTMR: conflict with earlier EU traditional specialties guaranteed

This ground for invalidity was already envisaged in Article 24 of Regulation (EU) No 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs. Article 7(1)(m) EUTMR: conflict with earlier EU plant variety denominations

This ground for invalidity was already envisaged in Council Regulation (EC) No 2100/94 of 27/07/1994 on Community plant variety rights. The Office applied this Regulation in conjunction with Article 7(1)(f) EUTMR.

1.2 Grounds for invalidity that were not envisaged by EU law before the entry into force of Regulation (EU) 2015/2424 on 23 March 2016

The following grounds for invalidity did not exist in EU law before the entry into force of Regulation (EU) 2015/2424 and apply therefore only to European Union trade marks filed on and after 23 March 2016. ‘Other characteristics’ (than the shape), under Article 7(1)(e) EUTMR.

EUTMR. Conflicts with an earlier plant variety denomination protected at national level,

2 Relative Grounds for Invalidity, Namely Article 60(1)(d) EUTMR in Conjunction with Article 8(6) EUTMR and the Relationship with Article 60(1)(c) EUTMR in Conjunction with Article 8(4) EUTMR

Regulation (EU) 2015/2424 amending Regulation (EC) No 207/2009 on the Community trade mark (Amending Regulation) introduced Article 53(1)(d) of Regulation No 207/2009 in conjunction with Article 8(4a) of Regulation No 207/2009 [now Article 60(1)(d) EUTMR in conjunction with Article 8(6) EUTMR ] as a specific ground for invalidity for designations of origin and geographical indications (GIs) protected under EU or national law. Prior to that, GIs could form the basis of an application for invalidity pursuant to Article 53(1)(c) of Regulation No 207/2009 in conjunction with Article 8(4) of Regulation No 207/2009 . However, the introduction of this specific ground means that as of the entry into force of Article 53(1)(d) of Regulation No 207/2009 , GIs can only be invoked under the new ground. GIs can no longer form the basis of an application for invalidity under Article 53(1)(c) of Regulation No 207/2009 , even though the wording of that provision has not changed. Nevertheless, if an invalidity request based on a GI is filed after entry into force of the Amending Regulation, incorrectly indicating Article 53(1) (c) of Regulation No 207/2009 as a ground for invalidity, the Office will examine the request to the extent that it is clearly based on a GI, as if the ground invoked were Article 53(1)(d) of Regulation No 207/2009 . In such a case, there is no doubt as to the intention of the invalidity applicant to invoke the provision protecting earlier GIs. Article 53(1)(c) of Regulation No 207/2009 , in conjunction with Article 8(4) of Regulation No 207/2009 , continues to apply in invalidity proceedings based on GIs pending at the time of entry into force of the Amending Regulation.

As stated above, only Article 8(4a) of Regulation No 207/2009 can be invoked in applications for invalidity based on GIs as of the date of entry into force of the Amending Regulation. In the absence, on the one hand, of any transitory provisions and temporal restrictions as regards contested European Union trade marks in the Amending Regulation, and, on the other, considering that GIs were also a ground for refusal under the previous regime and that their use in the course of trade is inherent in their function, as of its entry into force, Article 53(1)(d) of Regulation No 207/2009 in conjunction with Article 8(4a) of Regulation No 207/2009 can be invoked against EUTMs regardless of their filing or priority date, and therefore even against EUTMs filed and registered with the Office before the entry into force of the Amending Regulation. The protection afforded to GIs by Article 53(1)(d) of Regulation No 207/2009 in conjunction with Article 8(4a) of Regulation No 207/2009 is therefore a continuation of the protection previously afforded by Article 53(1)(c) of Regulation No 207/2009 in conjunction with Article 8(4) of Regulation No 207/2009 . GIs thus invoked under Article 53(1)(d) of Regulation No 207/2009 in conjunction with Article 8(4a) of Regulation No 207/2009 had already to be protected at the time of filing the contested EUTM and be entitled to prohibit use of a subsequent trade mark. Furthermore, the essential conditions for protection of such earlier GIs as provided for by relevant EU or national legislation (e.g. protection against any direct or indirect commercial use; misuse, imitation or evocation; false or misleading indication or other misleading practice) applied already at the filing or priority date of the contested EUTM, even if filed before the entry into force of the Amending Regulation. Article 8(4a) of Regulation No 207/2009 better reflects the requirements of EU legislation, which does not require that a GI is used in the course of trade in order for it to be entitled to prevent unauthorised use. Nevertheless, Article 63(3) EUTMR prevents an applicant whose previous request for invalidity based on a GI under Article 53(1)(c) of Regulation No 207/2009 has been adjudicated on its merits from filing a new application for invalidity under Article 53(1) (d) of Regulation No 207/2009 on the basis of the same GI against the same contested mark.