CANCELLATION No C 37 097 (INVALIDITY) 

 

Bomanite International Limited, Dte Business Advisory Services, Park House, 26 North End Road, London NW11 7PT, United Kingdom (applicant), represented by Ponti & Partners, S.L.P, C. Consell de Cent, 322, 08007 Barcelona, Spain (professional representative)

 

a g a i n s t

 

Pavimentos Campoy, P.I. Majarabique C/Comedia 22, 41300 San Jose de la Rinconada - Sevilla, Spain (EUTM proprietor), represented by Teresa Delgado Garcia, P.I. Majarabique, 41300 San Jose de la Rinconada, Spain (professional representative).

On 30/03/2021, the Cancellation Division takes the following

 

 

DECISION

1. The application is partially upheld:

1.1 The request for assignment is rejected.

1.2 The application for a declaration of invalidity is upheld.

2. European Union trade mark No 8 181 414 is declared invalid in its entirety.

3. Each party bears its own costs.

 

REASONS

 

On 01/08/2019, the applicant filed a request for an assignment and, as an alternative measure, for a declaration of invalidity, of European Union trade mark No 8 181 414 (figurative mark) (the EUTM), filed on 26/03/2009 and registered on 17/06/2013. The request is directed against all the goods and services covered by the EUTM, namely:

 

Class 19: Non metallic buildings; building materials (non-metallic); tile floorings, not of metal; coatings (building materials); concrete; tiles, not of metal; mosaics for building; wall claddings, not of metal; Paving blocks, not of metal; stamped concrete paving; stamped concrete wall claddings; road coating materials; floors (not of metal).

Class 37: Construction, repair and maintenance of stamped concrete paving; construction of stamped concrete walls.

The applicant invoked Article 60(1)(b) EUTMR in conjunction with Article 8(3) EUTMR and Article 21(2)(a) EUTMR, based on UK trade mark registration No 1 430 300 and on Spanish trade mark registration No 926 142(7), and Article 59(1)(b) EUTMR.

 

SUMMARY OF THE PARTIES’ ARGUMENTS

  

The applicant argues that the mark was filed in bad faith because at the time of its filing, the applicant for the contested trade mark, Bomanite Iberica, was a party to an agreement signed in 2005, pursuant to which Bomanite Iberica was authorized to use the mark Bomanite and sell products of Bomanite Group. However, the agreement did not authorize Bomanite Iberica to register the trade mark under its own name. The applicant claims that it is the successor in title of Bomanite Group. It explains that the owner of the ‘BOMANITE’ trade mark was Bomanite Corporation, the parent company of Bomanite Group. Furthermore, it argues that in 2009, Bomanite Corporation, in order to handle its network of licensees more efficiently, created two companies, one of them the applicant for invalidity, which was supposed to be in charge of the markets outside of the USA and Canada. One of the directors of the applicant executed the abovementioned agreement on behalf of Bomanite Group. The UK trade mark ‘Bomanite’ was assigned to the applicant in May 2009. The applicant emphasizes the text in the assignment agreement, according to which the goodwill of the business was assigned together with the trade mark, which makes the applicant the successor in title of Bomanite Group and Corporation. It argues that whilst Bomanite Group and Bomanite Corporation ceased to exist in December 2012, the business continues through the applicant. It puts forward that it is entitled to request the assignment of the contested trade mark pursuant to Article 21 EUTMR, on account of its ownership of the UK and Spanish trade marks and because it is the successor in title of Bomanite Group, which was in the principal-agent relationship with Bomanite Iberica, at the time of filing of the contested mark. Moreover, the applicant argues that it is also entitled to file an invalidity request based on bad faith, because it is suffering the harm of the unlawful actions of Bomanite Iberica. It explains that prior to the filing of the contested mark, Bomanite Group informed all its licensees and agents that due to the restructuring, new agreements will be offered to existing partners. It claims that Bomanite Iberica was the only one of the partners that did not accept the new agreement, as a consequence of which (as well as of other circumstances) Bomanite Group terminated the existing agreement with Bomanite Iberica, in April 2009. Despite the termination, Bomanite Iberica continued to use the trade mark. This prompted a lawsuit brought by Bomanite Group and the applicant, against Bomanite Iberica, in California, which resulted in the judgment ordering Bomanite Iberica to cease using the mark. The applicant concludes that the contested trade mark should be assigned to the applicant or, if this request is not upheld, it should be declared invalid for having been filed in bad faith.

The applicant submitted evidence in support of its arguments.

As the applicant requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Cancellation Division will describe the evidence only in the most general terms without divulging any such data.

The evidence submitted by the applicant consist of following documents:

 Exhibit 1: copy of the agreement dated in May 2005, between Bomanite Group and Bomanite Iberica.

 Exhibit 1.2: copy of the notice of termination dated 27/04/2009.

 Exhibit 2: excerpt from Companies House, the UK companies register, regarding the applicant, including the list of directors.

 Exhibit 3: deeds of assignment of the UK and Spanish trade marks ‘Bomanite’ and a witness statement of the attorney who seems to be confirming that the transfers took place based on the documents he was shown.

 Exhibit 4: excerpt from the UKIPO database regarding the UK trade mark.

 Exhibit 5: excerpt from the Spanish PTO database regarding the Spanish trade mark Bomanite.

The applicant also refers to the documents related to the proceedings in the USA, which were submitted in the cancellation proceedings No C 8 491. The Cancellation Division decides to take these documents into account, because it considers the documents to be sufficiently identified and because the EUTM proprietor was the other party to the cancellation No C 8 491, and it is thus familiar with the documents. For these reasons the Cancellation Division does not consider it necessary to grant the EUTM proprietor a specific time limit to comment on these documents, which, in any event, do not deteriorate the situation of the EUTM proprietor, as will be seen below. These documents are the following:

 Complaint for breach of contract, interference with prospective economic advantage, unfair competition, conversion, accounting and declaratory relief, which is the action filed by Bomanite Group and the applicant, against Bomanite Iberica, on 11/10/2011, to Madera Superior Court.

 A document entitled [PROPOSED] JUDGMENT, of Superior Court of the State of California, County of Madera, dated 06/11/2012.

 

The EUTM proprietor did not file any observations within the time limit set for this purpose by the Office. Therefore, pursuant to Article 17(2) EUTMDR, the Office closed the adversarial part of the proceedings and will not take the EUTM proprietor’s observations, filed after the time limit expired, into account. Moreover, the observations also cannot be taken into account because they were filed in Spanish and no translation followed. According to Article 146(9) EUTMR, in written proceedings before the Office any party may use any language of the Office. If the language chosen is not the language of the proceedings, the party must supply a translation into that language within one month of the date of the submission of the original document. The language of these proceedings is English.

UNAUTHORISED FILING BY AN AGENT OR REPRESENTATIVE OF THE TRADE MARK OWNER — ARTICLE 8(3) EUTMR

 

The applicant invoked Article 60(1)(b) EUTMR in conjunction with Article 8(3) EUTMR and Article 21(2)(a) EUTMR, based on UK trade mark registration No 1 430 300. In the observations accompanying the application form, it also mentions its ownership of Spanish trade mark No 926 142(7) in this context, and presents documents regarding this right. Therefore, both trade marks will be taken into account as basis of the application in the context of these grounds.

According to Article 60(1)(b) EUTMR, a European Union trade mark will be declared invalid on application to the Office where there is an earlier trade mark, as referred to in Article 8(3) EUTMR, and the conditions set out in that paragraph are fulfilled.

Pursuant to Article 21(1) EUTMR, where an EU trade mark is registered in the name of the agent or representative of a person who is the proprietor of that trade mark, without the proprietor's authorisation, the latter will be entitled to demand the assignment of the EU trade mark in his favour, unless such agent or representative justifies his action. According to Article 21(2)(a) EUTMR, the proprietor of the trade mark may submit a request for assignment pursuant to Article 60(1)(b) EUTMR instead of an application for a declaration of invalidity.

According to Article 8(3) EUTMR, upon opposition by the proprietor of the trade mark, a trade mark will not be registered where an agent or a representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor’s consent, unless the agent or representative justifies his action.

 

Therefore, the grounds for refusal of Article 8(3) EUTMR are subject to the following requirements:

 the signs are identical or only differ in elements that do not substantially affect their distinctiveness; 

 the goods and services are identical or equivalent in commercial terms; 

 the person who applied for the contested mark is an agent or a representative of the owner of the earlier mark; 

 the application for the trade mark was filed without the consent of the owner of the earlier mark; 

 the agent or representative fails to justify its acts. 

These conditions are cumulative. Therefore, where one of the conditions is not satisfied, the invalidity application based on Article 60(1)(b) EUTMR in conjunction with Article 8(3) EUTMR, or respectively, a request for assignment pursuant to Article 21 EUTMR, cannot succeed.

  

Agent or representative relationship

The applicant mainly relies on the agreement (Exhibit 1) that was concluded between Bomanite Group and Bomanite Iberica (hereinafter ‘Agreement’). According to this Agreement, Bomanite Iberica got the exclusive right to formulate, manufacture and sell Bomanite products in Spain, Morocco, France, Portugal and Luxembourg. Bomanite Group would disclose and provide Bomanite Iberica the formulae, specifications and other information needed for blending and manufacture of Bomanite products, and Bomanite Iberica would pay royalties to Bomanite Group from the sold products and commits to minimum product sales for the agreement to remain in effect. Bomanite Iberica also agreed to never reveal the information disclosed to it by Bomanite Group regarding the Bomanite products. Moreover, according to the Agreement, Bomanite Group owns exclusive rights to the technology and trade marks for Bomanite Corporation and Bomanite Iberica had to register the trade mark Bomanite in the above mentioned territories, under the name of Bomanite Corporation.

The agreement rather clearly establishes a principal-agent relationship between the parties that signed it. However, since none of the companies that signed the agreement is a party to these proceedings, it must be established what relationship there is between the signatories and the parties.

Bomanite Iberica was the company who originally applied for the contested trade mark in March 2009. The EUTM was transferred, in 2017, to the current EUTM proprietor. Article 8(3) EUTM explicitly provides that it applies to situations where agent or representative applies for the trade mark registration. In the present case, it was the agent who applied for the contested trade mark. Therefore, the subsequent transfer bears no importance for this ground.

It is apparent from the wording of Article 8(3) EUTMR that its provisions apply only if the applicant for the EU trade mark at issue is or has been the agent or representative of the proprietor of the mark at issue (14/02/2019, T-796/17, Mouldpro, ECLI:EU:T:2019:88, § 32). In the present case, the current owner of the earlier trade marks is the applicant. The applicant acquired the trade marks from Bomanite Corporation (through two other companies) in May 2009 (Exhibit 3). Bomanite Corporation is also the entity that was supposed to be registered as the owner of the trade marks Bomanite in the specified territories, according to the Agreement. On the other hand, the principal, in the principal-agent relationship, was Bomanite Group, Inc., which was the company that signed the agreement with Bomanite Iberica. In the recital of the Agreement, it is stated that Bomanite Group owns the exclusive rights for all the technology and trade marks for Bomanite Corporation throughout the world except for the USA and Canada. However, this is not confirmed by any other document in the file or by Bomanite Corporation. According to the applicant, Bomanite Corporation was the parent company of Bomanite Group but there is no evidence to support this statement. In any event, since the invalidity applicant (and previously Bomanite Corporation) is/was the proprietor of the earlier mark for the purposes of Article 8(3) EUTMR, the existence of commercial relations between the applicant for the contested trade mark (Bomanite Iberica) and a third party company is not capable of showing that Bomanite Iberica has been the agent or representative of the invalidity applicant (or Bomanite Corporation). The fact that Bomanite Corporation may have been the parent company of Bomanite Group or that Bomanite Group’s director is also one of the directors of the applicant (Exhibit 2) does not call into question the fact that they are separate legal entities and that any obligation on Bomanite Iberica in respect of Bomanite Group does not automatically entail an obligation in respect of the invalidity applicant or Bomanite Corporation (see, for analogy, 14/02/2019, T-796/17, Mouldpro, ECLI:EU:T:2019:88, § 32).

The Cancellation Division notes that the applicant has also made references and has included hyperlinks to its own website and to third parties’ websites where allegedly further information about the ‘Bomanite’ companies can be found.

It is to be pointed out that, although according to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

While it is true that the legislator has introduced the possibility for the applicant to rely on online evidence which may take the place of any physical evidence (Article 16(1)(b) EUTMDR in conjunction with Article 7(3) EUTMDR), this possibility relates only to cases where evidence concerning the filing or registration of the earlier rights or evidence concerning the contents of the relevant national law is accessible online from a source recognised by the Office. The legislator has not extended this possibility to evidence of circumstances related to a claim of a trade mark filed by an agent and/or to sources not recognised by the Office.

With a view to assessing the applicant’s claim, the Cancellation Division can only rely on the evidence submitted by the parties; a mere indication of a website through a hyperlink does not constitute evidence; a mere indication of the website where the Office can find further information is insufficient, as this does not provide the Office with any relevant indications and, moreover, the content of the link may have changed in the meantime (see, in this sense, decision of 23/06/2014 – R 1836/2013-2, SHAPE OF A CLEAR TEARDROP-SHAPED BOTTLE (3D MARK), §§ 14 – 15; 07/02/2007, T 317/05, Guitar, EU:T:2007:39, §§ 58-59). The applicant could have submitted a data carrier with the copies of the publications or could have provided a printed version of the information accessible on the websites provided. Consequently, the submission of links to websites cannot be taken into account.

Considering all the above, it must be considered that from the documents submitted by the applicant it is not possible to draw the conclusion that Bomanite Iberica was an agent or representative of the owner of the earlier marks.

Moreover, the documents submitted by the applicant do not demonstrate the relationship between Bomanite Group and the applicant. The applicant argues that it is the successor in title of Bomanite Group but the evidence filed to this effect is very inconclusive. The excerpt from Companies House (Exhibit 2) shows that the applicant was incorporated on 21/03/2009 but it does not reveal any relationship with Bomanite Group. The applicant points out that one of the applicant’s four directors is the same person as the one who signed the Agreement on behalf of Bomanite Group. This is indeed apparent from Exhibit 2 and from the Agreement. However, this does not demonstrate what type of relationship there is between the two companies, if any, let alone that the applicant is the successor in title of Bomanite Group as far as the Agreement and the relationship with Bomanite Iberica is concerned.

The applicant also relies on the assignment deeds involving the earlier marks. The marks were assigned by Bomanite Corporation to Rycon Holdings in April 2009, from the latter to Nicheco Holdings in May 2009 and on the same day to the applicant. The applicant submitted all three deeds of assignment, all of which include the following text:

In pursuance of the said agreement - the Assignor with full title guarantee HEREBY ASSIGNS and transfers all right title and interest in the Trade Marks, including all statutory and common law rights attaching thereto together with goodwill of the business therein and the right to sue for past infringements and to retain any damages obtained as a result of such action, to the Assignee.

However, these documents only show that the earlier trade marks were acquired by the applicant from Bomanite Corporation but do not clarify what is the connection between the applicant and Bomanite Group. The mentioned ‘goodwill of the business therein’ does not specify whether or not it includes the Agreement and the rights arising from it. This would be an important clarification given that the mark was assigned by its owner Bomanite Corporation but this is not the entity that was a party to the Agreement. Consequently, these documents do not demonstrate that the applicant is the successor in title of Bomanite Group as far as the relationship with Bomanite Iberica is concerned.

Finally, as regards the judgment of the US Court, the Cancellation Division must first note that it is not clear whether or not this document is a final decision of the Court. Second, although it appears that the Court considered that Bomanite Iberica has the same obligations from the agreement to both Bomanite Group and the applicant, the Cancellation Division does not have at its disposal the documents based on which the Court came to this conclusion and the judgment itself does not contain any reasoning. Clearly this document cannot serve as a proof that the applicant is the successor in title of Bomanite Group.

Considering all the above, it must be concluded that the applicant failed to prove that the company that filed the contested mark (Bomanite Iberica) was/is its agent or representative and neither did it demonstrate that it is the successor in title of the entity whose agent Bomanite Iberica was.

 

As one of the necessary requirements is not met, the application must be rejected as not well founded under Article 60(1)(b) EUTMR in conjunction with Article 8(3) EUTMR. Since the application is not successful as far as these grounds are concerned, the contested trade mark cannot be assigned to the applicant pursuant to Article 21 EUTMR.

The assessment of the application will proceed with the ground of Article 59(1)(b) EUTMR.

 

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 59(1)(b) EUTMR 

General principles 

Article 59(1)(b) EUTMR provides that a European Union trade mark will be declared invalid where the applicant was acting in bad faith when it filed the application for the trade mark. 

There is no precise legal definition of the term ‘bad faith’, which is open to various interpretations. Bad faith is a subjective state based on the applicant’s intentions when filing a European Union trade mark. As a general rule, intentions on their own are not subject to legal consequences. For a finding of bad faith there must be, first, some action by the EUTM proprietor which clearly reflects a dishonest intention and, second, an objective standard against which such action can be measured and subsequently qualified as constituting bad faith. There is bad faith when the conduct of the applicant for a European Union trade mark departs from accepted principles of ethical behaviour or honest commercial and business practices, which can be identified by assessing the objective facts of each case against the standards (Opinion of Advocate General Sharpston of 12/03/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 60). 

Thus, 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 (03/06/2010, Internetportal und Marketing, C‑569/08, EU:C:2010:311, § 36 and 37). Such registrations are contrary to the principle that the application of 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 (14/12/2000, Emsland-Stärke, C‑110/99, EU:C:2000:695, § 51 and 52, and 07/07/2016, LUCEO, T‑82/14, EU:T:2016:396, §52).

In that regard, if, insofar as it characterises the applicant's intention at the time of filing the application for registration of an EU trade mark, the concept of bad faith, within the meaning of Article 59(1)(b) EUTMR, constitutes a subjective element, it must be determined in the light of the objective circumstances of the case (11/06/2009, Lindt Goldhase, C‑529/07, EU:C:2009:361, § 42).

It is for the applicant for a declaration of invalidity who intends to rely on Article 59(1)(b) EUTMR to establish the circumstances which make it possible to conclude that an application for registration of a European Union trade mark was filed in bad faith, the good faith of the applicant being presumed until proven otherwise (08/03/2017, Formata, T‑23/16, EU:T:2017:149, § 45).

Whether an EUTM proprietor acted in bad faith when filing a trade mark application must be the subject of an overall assessment, taking into account all the factors relevant to the particular case (11/06/2009, C‑529/07, Lindt Goldhase, EU:C:2009:361, § 37).

Outline of the relevant facts

First, it has to be clarified that the company that applied for the contested mark on 26/03/2009 was Bomanite Iberica. This is the point in time and the entity towards which the bad faith has to be assessed. The fact that the mark was transferred, in 2017, to the current EUTM proprietor, is irrelevant for the present assessment.

Firstly, Article 59(1)(b) EUTMR explicitly refers to the bad faith of the applicant, when he filed the application for the contested trade mark, which leaves no room for interpretation as to the moment and person in relation to which bad faith has to be assessed. Secondly, absolute grounds for invalidity, such as the applicable Article 59(1)(b) EUTMR, work in the public interest as they provide a means to clean the Office’s register of trade marks that should not have been registered in the first place, because the applicant’s intention was to use them as a weapon or tool in pursuing illicit aims, rather than as a designator of the origin of goods and services. To allow such a substantial flaw of an EUTM to be healed retroactively simply by transferring it to a third party, who was not involved in the registration proceedings and can consequently not have jeopardised the EUTM with his or her bad faith intentions, would go against the reason for the existence of the provision. This applies even more when taking into consideration that nothing would prevent that third party from re-transferring the EUTM to the initial proprietor in the future.

As is evident from the Agreement and the termination notice (Exhibits 1 and 1.2), Bomanite Iberica was a party to an agreement with Bomanite Group, from May 2005 to the end of June 2009, when the sixty days notice of termination served by Bomanite Group on 27/04/2009 expired.

The Agreement set up detailed rules for the business relationship between the two companies which included Bomanite Group disclosing information and know-how relating to cement products to Bomanite Iberica and the right of Bomanite Iberica to manufacture and sell such goods, under the trade mark ‘Bomanite’, in certain territories, including several EU Member States, for which Bomanite Iberica would pay royalties to Bomanite Group, and there was a non-competition clause foreseen for the time period after the agreement’s termination.

The ownership of trade mark ‘Bomanite’ was also explicitly regulated in the Agreement, which stipulated that Bomanite Iberica must register and maintain the registration of the trade mark ‘Bomanite’ in Spain, Morocco, Portugal and Luxembourg with Bomanite Corporation as the registered owner. This provision leaves no doubt as to the intentions of the parties, who agreed that the registered owner of the trade mark ‘Bomanite’ was not Bomanite Iberica but Bomanite Corporation. The fact that only national marks are mentioned and not an EUTM is of little relevance. There is no conceivable scenario in which Bomanite Iberica could have honestly assumed that it could have a right to register an EUTM in its own name, whilst it knew that the national marks did not belong to it. In any event, if such a scenario existed, it would be up to the EUTM proprietor to explain it to the Cancellation Division, something that it did not do.

Bad faith may broadly be explained as the state of somebody who consciously does something wrong or by mistake – for example, contrary to accepted principles of ethical behaviour or honest business practices – thereby achieving an unjust advantage and/or causing others an unjust damage (07/03/2013, R 383/2012-1, ‘LLRG5’, § 38).

The relationship between Bomanite Iberica and Bomanite Group was sufficiently close to give rise to a duty of fair play. There was a close business cooperation between the entities which included sharing information, distribution of products and payment of royalties. The contractual relationship lasted for several years, at least between 2005 and 2009 and probably longer, as the Agreement identifies some previous agreements and states that the new Agreement supersedes them. Bomanite Iberica agreed, by signing the Agreement, to register the trade mark ‘Bomanite’ in another company’s name and to not engage to manufacture, sell or cause to be manufactured any products that could compete with Bomanite products for ten years following the termination of the Agreement. The Agreement was terminated by Bomanite Group on 27/04/2009 because, according to it, Bomanite Iberica did not comply with several obligations arising from the Agreement, including sales reports and payment of royalties. Unless circumstances changed, of which there is no indication in the file, the Agreement terminated 60 days after the letter was served, as stipulated in the Agreement. Bomanite Iberica filed the application for the contested mark on 26/03/2009, that is, still within the duration of the Agreement. Such behaviour does not fall within honest business practices. Bomanite Iberica applied for the trade mark that it knew does not belong to it. Bomanite Iberica could not have applied for the contested trade mark with honest intentions. It should have applied for the trade mark in the name of Bomanite Corporation, as stipulated in the Agreement for the national marks, or not apply for the mark at all, in view of its contractual obligation not to compete with Bomanite products for ten years after the termination of the contract.

In summary, the Agreement clearly shows that the applicant for the EUTM was a licensee of the ‘Bomanite’ mark and undertook to register the mark in a third party´s name. It is without any doubt that the EUTM applicant knew that the mark belonged to another party. Whether still in the term or after termination of the Agreement (especially with a view to the non-competition clause), applying for the mark in its own name is against the fair business practices.

Considering the above, the objective circumstances point to that the contested mark was not filed with honest intentions but in an attempt to usurp a mark of another entity, in a breach of a signed contract.

Where the Cancellation Division finds that the objective circumstances of the case may lead to the rebuttal of the presumption of good faith, it is for the EUTM proprietor to provide plausible explanations on the objectives and commercial logic pursued by the application for registration of that mark (23/05/2019, T-3/18 & T-4/18, ANN TAYLOR / ANNTAYLOR et al., EU:T:2019:357, § 36-37). In the present case, the EUTM proprietor has not provided arguments or evidence that would justify the action of Bomanite Iberica or explain the circumstances in such a manner that it would allow the Cancellation Division to reach a conclusion that Bomanite Iberica acted in good faith. The EUTM proprietor could have provided an explanation of the above events that could have justified its actions, but it failed to do so. The only submission filed by the EUTM proprietor cannot be taken into account for reasons explained above.

In view of all the above, the Cancellation Division considers that the documents submitted by the applicant sufficiently demonstrate that the contested mark was filed in bad faith.

For the sake of completeness, it is noted that the grounds of Article 59(1)(b) EUTMR refer to absolute grounds of refusal, unlike those of Article 60(1)(b) EUTMR in conjunction with Article 8(3) EUTMR, which are relative grounds of refusal. The purpose of absolute grounds of refusal is to keep trade marks with certain characteristics out of the Register, regardless of whether or not they are in conflict with other rights. The characteristics of a trade mark is what triggers the mechanism of refusal and it is secondary who files the invalidity request, unlike in the case of relative grounds of refusal, which are dependent on the identity of the invalidity applicant and which serve to resolve conflicts between trade marks (or other rights). Consequently, whilst the identity of the applicant, its ownership of the earlier mark and its relationship to the ‘agent or representative’ is a crucial factor as far as Article 8(3) EUTMR is concerned, as regards Article 59(1)(b) EUTMR, it is the actions of the applicant for the contested trade mark at the time of its filing alone that are the essential aspect for the assessment, regardless of who applied for the declaration of invalidity. This is also reflected by Article 63 EUTMR, according to which an application for invalidity based on bad faith can be filed by any natural or legal person that has the capacity in its own name to sue and be sued, whereas the application for a declaration of invalidity based on Article 60(1)(b) EUTMR in conjunction with Article 8(3) EUTMR may only be filed by proprietors of trade marks referred to in Article 8(3) EUTMR.

Conclusion

In the light of the above, the Cancellation Division concludes that it was sufficiently demonstrated that the application for the contested EUTM was filed in bad faith and the invalidity application is successful insofar as it was based on Article 59(1)(b) EUTMR. As the contested mark is registered for building materials including concrete, and construction services, including specifically construction of concrete walls, that is, the goods very closely connected to those that were the subject of the Agreement and services complementary to them, the contested mark must be declared invalid in its entirety.

COSTS

 

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

 

Since both parties have succeeded on some heads and failed on others, each party has to bear its own costs.

 

 

The Cancellation Division

 

Pierluigi M. VILLANI

Michaela SIMANDLOVA

Denitza STOYANOVA-VALCHANOVA

 

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.