JUDGMENT OF THE GENERAL COURT (Third Chamber)

7 November 2014 (*)

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

In Case T‑506/13,

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

applicant,

v

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

defendant,

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

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

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 12 July 2013 (Case R 1309/2012-4) concerning invalidity proceedings between Urb Rulmenti Suceava SA and Harun Adiguzel,

THE GENERAL COURT (Third Chamber),

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

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the General Court on 20 September 2013,

having regard to the response of OHIM lodged at the Registry on 28 January 2014,

having regard to the response of the intervener lodged at the Registry on 6 February 2014,

having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,

gives the following

Judgment

 Background to the dispute

1        On 10 November 2008, the intervener, Harun Adiguzel, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

2        The trade mark for which registration was sought is the word sign URB. The goods for which registration was sought are within Classes 6 and 7 of the Nice Agreement concerning the international classification of goods and services for the purposes of the registration of marks of 15 June 1957, as revised and amended. The trade mark applied for was registered on 10 June 2009.

3        On 29 June 2010 the applicant, Urb Rulmenti Suceava SA, filed an application for a declaration of invalidity under Article 52(1)(b) and Article 53(1)(a) of Regulation No 207/2009 against the registration of the Community trade mark at issue.

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

5        The registered proprietor of the collective trade marks and the international registrations mentioned in paragraph 4 above (‘the earlier marks’) is S.C. URB S.A., a company. The applicant asserts that it was authorised to use those trade marks.

6        By decision of 18 May 2012, the Cancellation Division rejected the applicant’s application for a declaration of invalidity on the grounds that no evidence had been adduced of the bad faith of the proprietor of the Community trade mark and that the applicant, which was not the proprietor of the earlier marks, was not entitled to rely on the likelihood of confusion between the marks at issue.

7        On 16 July 2012, the applicant filed an appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Cancellation Division.

8        By decision of 12 July 2013 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed that appeal.

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

 Forms of order sought

10      The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs.

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

11      OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

12      The intervener contends that the Court should dismiss the action.

 Law

13      In support of the present action, the applicant puts forward, in essence, two pleas in law alleging, first, breach of Article 53(1)(a) and Article 72 of Regulation No 207/2009 and, second, breach of Article 52(1)(b) of that regulation.

 The first plea, alleging breach of Article 53(1)(a) and Article 72 of Regulation No 207/2009

14      The applicant submits, essentially, that the Board of Appeal was wrong to find that it could not file an application for a declaration of invalidity under Article 53(1)(a) of Regulation No 207/2009 in reliance, inter alia, on the earlier collective marks mentioned in paragraph 4 above (‘the earlier collective marks’) because it was not the proprietor of them. It points out that it was authorised to use the earlier collective marks. It adds that it asked the proprietor of those trade marks to bring an action against the registration of the Community trade mark at issue but that the proprietor refused to act, without giving any reason. It asserts that it therefore had authority, pursuant to the provisions of Article 22(2) and (3) and of Article 72 of Regulation No 207/2009, to bring invalidity proceedings against the proprietor of that Community trade mark.

15      OHIM and the intervener dispute those arguments.

16      It is apparent from the contested decision that the Board of Appeal found, in its examination of the relative ground for invalidity provided for by Article 8(1)(b) of Regulation No 207/2009, which is relied on by the applicant, that the applicant was not the registered proprietor of the trade marks it relied on and that it had not obtained authorisation from the proprietor to make an application for a declaration of invalidity. It took the view that it appeared from the documents produced by the applicant that it was not entitled to rely on the earlier collective trade marks on which it based, inter alia, its application for a declaration of invalidity.

17      As a preliminary point, it must be observed that, under Article 56(1)(b) of Regulation No 207/2009, an application for a declaration that the trade mark is invalid may be submitted to OHIM, where Article 53(1) applies, by the persons referred to in Article 41(1), that is to say, by the proprietors of earlier trade marks and licensees authorised by the proprietors of those trade marks.

18      First, it is common ground that the applicant was not the proprietor of the earlier collective marks on which it relied in support of its application for a declaration of invalidity of the Community trade mark.

19      Second, it does not appear from the documents before the Court that the applicant either had a licence or, in any event, had been authorised by the proprietor of those marks to file an application for a declaration of invalidity with OHIM.

20      Third, as regards the reference to Article 22(2) and (3) and to Article 72 of Regulation No 207/2009, it must be observed that it follows from Article 22(3) of that regulation that, without prejudice to the terms of the licensing contract, the licensee may bring proceedings for infringement of a Community trade mark only if its proprietor consents thereto. However, that article makes clear that the holder of an exclusive licence may bring such proceedings if the proprietor of the trade mark, after formal notice, does not himself bring infringement proceedings within an appropriate period. Moreover, Article 72 of that regulation provides, inter alia, that Article 22(3) is to apply to every person who has authority to use a Community collective mark. However, it must be observed that those provisions are applicable not to applications for a declaration of invalidity but to actions for infringement. The same is true of the provisions of Romanian law relied on by the applicant.

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

 The second plea, alleging breach of Article 52(1)(b) of Regulation No 207/2009

22      The applicant submits that the applicant for the Community trade mark at issue acted in bad faith when filing the application for registration of the trade mark.

23      OHIM and the intervener dispute that argument.

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

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

26      Where the applicant for a declaration of invalidity seeks to rely on that ground, it is for that party to prove the circumstances which substantiate a finding that the Community trade mark proprietor had been acting in bad faith when it filed the application for registration of that mark (judgment of 13 December 2012 in pelicantravel.com v OHMI – Pelikan (Pelikan), T‑136/11, ECR, EU:T:2012:689, paragraph 21 and case-law cited).

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

–        the fact that the applicant knows or should know that a third party is using, in at least one Member State, an identical or similar sign for an identical or similar product liable to be confused with the sign for which registration is sought;

–        the applicant’s intention of preventing that third party from continuing to use such a sign;

–        the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought.

28      It is apparent from the wording used in that judgment, that the three factors set out in paragraph 27 above are only examples drawn from a number of factors which can be taken into account in order to decide whether the applicant for registration of a trade mark was acting in bad faith at the time of filing the application (judgment of 14 February 2012 in Peeters Landbouwmachines v OHMI – Fors MW (BIGAB), T‑33/11, ECR, EU:T:2012:77, paragraph 20, and judgment in Pelikan, paragraph 26 above, EU:T:2012:689, paragraph 26).

29      It must therefore be held that, in the context of the overall analysis undertaken pursuant to Article 52(1)(b) of Regulation No 207/2009, account may also be taken of the commercial logic underlying the filing of the application for registration of that sign as a Community trade mark (judgment in BIGAB, paragraph 28 above, EU:T:2012:77, paragraph 21), and the chronology of events leading to that filing (see, to that effect and by analogy, judgment of 3 June 2010 in Internetportal und Marketing, C‑569/08, ECR, EU:C:2010:311, paragraph 52).

30      Finally, the Court added that, in order to determine whether there was bad faith, consideration had also to be given to the applicant’s intention at the time when he files the application for registration (judgment in Chocoladefabriken Lindt & Sprüngli, paragraph 27 above, EU:C:2009:361, paragraph 41). The Court made clear that the applicant’s intention at the relevant time was a subjective factor which had to be determined by reference to the objective circumstances of the particular case (judgment in Chocoladefabriken Lindt & Sprüngli, paragraph 27 above, EU:C:2009:361, paragraph 42).

31      In the present case, it must be observed that the applicant confines itself to recording, in the form of a relatively brief list and without further details, certain matters which, in its view, were such as to establish the bad faith of the intervener when it filed the application for registration of a Community trade mark.

32      First, the applicant asserts that all companies authorised to use the earlier collective marks had the same rights regarding those trade marks and no third party had the right to register any of those trade marks.

33      In that regard and by analogy, the Court has held that the fact that a third party has long used a sign for an identical or similar product capable of being confused with the mark applied for and that that sign enjoys some degree of legal protection is one of the factors relevant to the determination of whether the applicant was acting in bad faith (judgment in Chocoladefabriken Lindt & Sprüngli, paragraph 27 above, EU:C:2009:361, paragraph 46).

34      In such a case, the applicant’s sole aim in taking advantage of the rights conferred by the Community trade mark might be to compete unfairly with a competitor who is using a sign which, because of characteristics of its own, has by that time obtained some degree of legal protection (judgment in Chocoladefabriken Lindt & Sprüngli, paragraph 27 above, EU:C:2009:361, paragraph 47).

35      That said, it cannot however be excluded that even in such circumstances, and in particular when several producers were using, on the market, identical or similar signs for identical or similar products capable of being confused with the sign for which registration is sought, the applicant’s registration of the sign may be in pursuit of a legitimate objective (judgment in Chocoladefabriken Lindt & Sprüngli, paragraph 27 above, EU:C:2009:361, paragraph 48).

36      Furthermore, the Court has held that, in order to determine whether the applicant is acting in bad faith, consideration may be given to the extent of the reputation enjoyed by a sign at the time when the application for its registration as a Community trade mark is filed (judgment in Chocoladefabriken Lindt & Sprüngli, paragraph 27 above, EU:C:2009:361, paragraph 51). The extent of that reputation might justify the applicant’s interest in ensuring a wider legal protection for his sign (judgment in Chocoladefabriken Lindt & Sprüngli, paragraph 27 above, EU:C:2009:361, paragraph 52).

37      In the present case, it is common ground that the Romanian bearing production undertakings were originally State owned. Bearings were marketed throughout the world under the collective trade marks URB held by Centrala industriala de rulmanti si organe d’asamblare (CIROA, industrial plant for bearings and industrial fasteners), which was the department of the Ministry for Industry responsible for coordinating Romanian bearings producers. Once the process of privatisation was under way, CIROA’s assets were transferred to S.C. URB, a private company which, as stated in paragraph 5 above, was the proprietor of the earlier trade marks. However, several companies, including the applicant and S.C. RULMENTI SA Barlad, a company of which the intervener is the manager and shareholder, were authorised to use the earlier collective trade marks.

38      As regards the applicant’s argument set out in paragraph 32 above, it should be noted that it is not clear from the documents before the Court that the applicant was entitled to use the earlier collective trade marks at the time when the intervener filed his application for a Community trade mark. It is apparent both from the written submissions of OHIM and from the decision of the Cancellation Division that, in 2002 the Regulament de utilizare al marcii (Romanian regulation on the use of the earlier collective trade marks) was amended and that, following that amendment, that regulation no longer contained the list of undertakings authorised to use those collective trade marks. Furthermore, Article 2 of the amended version of that regulation provided that third parties would have the right to use the collective trade marks only under a franchise agreement managed by the registered proprietor of those trade marks. The applicant was not party to such an agreement, which means that from 2002 onwards it was no longer entitled to use the earlier collective trade marks. In that regard, it must be noted that, in its written submissions, the applicant makes clear that it is disputing from the outset the legality of the Regulament de utilizare al marcii established by S.C. URB. It also states that that regulation was annulled by a judgment of the Tribunalul Bucureşti (local court, Bucarest, Romania) of 5 June 2012, upheld on 13 February 2013 by a judgment of the Curtea de apel Bucureşti (Bucarest appeal court). However, it is not apparent from the documents before the Court that this judgment is final, as the intervener pointed out that an appeal on a point of law had been lodged before the Înalta Curte de Casaţie şi Justiţie (High court of Cassation and of Justice, Romania). In any event, it is common ground that those judicial decisions were given on dates later than that on which the intervener filed his application for a Community trade mark, that is to say, 10 November 2008. Consequently, on that date, the applicant did not have the same rights over the earlier collective trade marks as the intervener and S.C. RULMENTI Barlad had. Accordingly, the premise on which the applicant’s argument is based is false and that argument can only be rejected.

39      Moreover, although the applicant adds that no third party had the right to register any of those trade marks, it fails, in its written submissions, to provide any information which would support that allegation.

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

41      However, it is understandable, from a commercial point of view, that the intervener wished to extend the protection conferred on it by the Regulament de utilizare al marcii by registering one of its trade marks as a Community trade mark. Indeed, during the period which preceded the filing of the application for registration, the intervener generated turnover from goods marketed under the trade mark URB in several Member States, which was a plausible incentive for filing an application for the registration of a Community trade mark (see, to that effect, judgment in BIGAB, paragraph 28 above, EU:T:2012:77, paragraph 23). Furthermore, the applicant does not, in its written submissions, disclose any information which could establish that the application for registration at issue was artificial in nature and devoid of logic in commercial terms for the intervener.

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

43      In that regard, it must be observed that the Court has held that the intention to prevent a third party from marketing a product may, in certain circumstances, be an element of bad faith on the part of the applicant (judgment in Chocoladefabriken Lindt & Sprüngli, paragraph 27 above, EU:C:2009:361, paragraph 43). It added that that is in particular the case when it becomes apparent, subsequently, that the applicant applied for registration of a sign as a Community trade mark without intending to use it, his sole objective being to prevent a third party from entering the market (judgment in Chocoladefabriken Lindt & Sprüngli, paragraph 27 above, EU:C:2009:361, paragraph 44).

44      On that point, it suffices to note that it is not disputed that the intervener marketed goods under the trade mark URB in several Member States after the date of registration at issue. Moreover, the applicant has not established that it was the intervener’s intention to exclude it from the market.

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

46      Fifth, the applicant submits that the intervener acted in bad faith given that it knew that S.C. RULMENTI Barlad was one of the companies authorised to use the earlier collective trade marks.

47      In that regard and by analogy, it is sufficient to note that the Court has held that the fact that the applicant knows or should know that a third party has long been using, in at least one Member State, an identical or similar sign for an identical or similar product capable of being confused with the sign for which registration is sought is not sufficient, in itself, to permit the conclusion that the applicant was acting in bad faith (judgment in Chocoladefabriken Lindt & Sprüngli, paragraph 27 above, EU:C:2009:361, paragraph 40). Since it follows from paragraphs 32 to 45 above that the other grounds put forward by the applicant are not capable of establishing bad faith on the part of the intervener, that fact is not sufficient to support such a conclusion.

48      It follows from the foregoing that the second plea in law must be rejected and the action dismissed in its entirety.

 Costs

49      Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with form of order sought by OHIM. The intervener is to bear his own costs.

On those grounds,

THE GENERAL COURT (Third Chamber)

hereby:

1.      Dismisses the action.

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

3.      Declares that Harun Adiguzel is to bear his own costs.

Papasavvas

Forwood

Bieliūnas

Delivered in open court in Luxembourg on 7 November 2014.

[Signatures]