CANCELLATION No 15 545 C (INVALIDITY)

Bearproof AS, Servicetorget, 8100 Misvær, Norway (applicant), represented by Angelica Coppini, 137, Spinola Road, St. Julians STJ3011, Malta (professional representative)

a g a i n s t

Jonas Lännbjer AB, Prästbolsvägen 2, 663 41 Hammarö, Sweden (EUTM proprietor), represented by Hynell Intellectual Property AB, Järnvägsgatan 2, 683 30 Hagfors, Sweden (professional representative).

On 22/01/2019, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The applicant bears the costs, fixed at EUR 450.

REASONS

The applicant filed an application for a declaration of invalidity against European Union trade mark No 16 419 723 (figurative mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely all the goods in Classes 8, 9, 13, 18, 20, 25, 28 and 31. The applicant invoked Article 59(1)(b) EUTMR (bad faith), and Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR (earlier non-registered mark BEARPROOF used in Germany, Lithuania and Sweden for guns, knives, hunting and fishing equipment).

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the EUTM proprietor was its agent since before 2013 and it filed the EUTM while it was still its agent. Furthermore, it stated that the mark BEARPROOF “has been in use in Sweden directly by the applicant and through the mark-holder as a licensee on behalf of the applicant”. In support of its observations, the applicant filed one excerpt from the Norwegian Register of Business Enterprises in Norwegian .

The EUTM proprietor replied that the evidence submitted by the applicant does not show that the EUTM proprietor was or is its licensee or agent and requested the applicant to file proof of the alleged facts as well as proof of the use of more than mere local significance of the invoked earlier non-registered mark. In support of its observations, the EUTM proprietor filed some evidence which will be assessed further in the decision, if necessary.

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).

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).

Where the applicant for a declaration of invalidity seeks to rely on bad faith, it is for that party to prove the circumstances which substantiate a finding that the EU trade mark proprietor had been acting in bad faith when it filed the application for registration of that mark (judgement of 14/02/2012, T-33/11, ‘BIGAB’, para 17).

Bad faith might be applicable when the parties involved have or have had any kind of relationship, such as (pre-/post-) contractual relationships, giving rise to mutual obligations and a duty of fair play in relation to the legitimate interests and expectations of the other party (13/11/2007, R 336/2007‑2, CLAIRE FISHER / CLAIRE FISHER, § 24).

In view of the foregoing, the Cancellation Divisions notes that the applicant has failed to submit any evidence to prove that the application for the registration of the contested mark was made in bad faith. The applicant limited itself to submitting three paragraphs in the notice of invalidity and the excerpt in Norwegian mentioned above. Although the applicant did not file any translation of the respective document in the language of the proceedings, the EUTM proprietor explained its content and commented that it does not show any reference to the EUTM proprietor as being licensee or agent of the applicant, arguments with which the Cancellation Division concurs. Furthermore, the EUTM proprietor itself requested the applicant to file evidence to prove that indeed it was its agent or licensee; nevertheless, the applicant did not file any further documents. Consequently, the claim under Article 59(1)(b) EUTMR is rejected as unfounded as the applicant did not file any evidence to proof the EUTM proprietor’s bad faith.

RELATIVE GROUNDS FOR INVALIDITY - NON REGISTERED MARK USED IN THE COURSE OF TRADE Article 60(1)(c) EUTMR in connection with Article 8(4) EUTMR

Pursuant to Article 60(1)(c) EUTMR, a European Union trade mark shall, on request to the Office, be declared invalid where there is an earlier sign as referred to in Article 8(4) EUTMR and the conditions set out in that paragraph are fulfilled.

The grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the applicant acquired rights to the sign on which the application for a declaration of invalidity is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the application for a declaration of invalidity based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

In addition, in cancellation proceedings the applicant has to prove the use of the earlier sign in the course of trade not only prior to the filing of the contested EUTM but also at the time of the filing of the cancellation request. This condition stems from the wording of Article 60(1)(c) EUTMR, which states that an EU trade mark shall be declared invalid ‘where there is an earlier right as referred to in Article 8(4) EUTMR and the conditions set out in that paragraph are fulfilled’ (see decision of the Cancellation Division of 05/10/2004, No 606 C, ‘ANKER’, and R 1822/2010-2 of 03/08/2011, § 15, confirmed by 23/10/2013, T-581/11, Baby Bambolina, EU:T:2013:553, § 26-27). These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the cancellation based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

The applicant claimed as an earlier right the use of the non-registered trade mark BEARPROOF for more than mere local significance in Germany, Lithuania and Sweden.

The rights under national laws

According to Article 95(1) EUTMR (previously Article 76(1) EUTMR), the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

Article 16(b) EUTMDR in conjunction with Article 7(2)(d) EUTMDR (previously Rule 19(2)(d) EUTMIR), expressly states that if an opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection.

Unlike other grounds in Article 8 EUTMR, Article 8(4) EUTMR does not specify the conditions governing the acquisition and scope of protection of the earlier right invoked. It is a framework provision where the particulars of the applicable law must be provided by the applicant in the case of invalidity proceedings.

Therefore, the onus is on the applicant to submit all of the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the applicant ‘… to provide the EUIPO not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C-263/09 P, Elio Fiorucci, EU:C:2011:452, § 50). The evidence to be submitted must allow the Cancellation Division to safely determine that a particular right is provided for under the law in question as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark as well as the conditions under which the right may prevail and be enforced vis-à-vis a subsequent trade mark.

As regards national law (which in this case refers to the national German, Swedish and Lithuanian laws), the applicant must provide the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right. The applicant must provide the reference to the relevant legal provision (article number and the number and title of the law) and the content (text) of the legal provision either in its submission or by highlighting it in another publication attached to the submission (e.g. excerpts from an official journal, a legal commentary or a court decision). As the applicant is required to prove the content of the applicable law, it must provide the applicable law in the original language. If that language is not the language of the proceedings, the applicant must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation.

Furthermore, the applicant must provide particulars proving fulfilment of the conditions of acquisition and of the scope of protection of the right. Apart from providing appropriate evidence of acquisition of the right invoked, the applicant must submit evidence that the conditions of protection vis-à-vis the contested mark are actually met and, in particular, put forward a cogent line of argument as to why it would succeed in preventing the use of the contested mark under the applicable law. Where the applicant relies on national case-law to prove its case, it must also provide the Office with the relevant case-law in sufficient detail and not merely by reference to a publication somewhere in the legal literature.

In the present case, the applicant did not submit any information on the legal protection in Germany, Lithuania and Sweden granted to the type of sign invoked by the applicant, namely the non-registered trade mark BEARPROOF. The applicant merely filed the extract from the Norwegian Register of Business Enterprises concerning the registration of the applicant’s company with the relevant Norwegian authority, but this document is insufficient to prove that this right satisfies the necessary conditions under the national laws of the invoked Member States, or particulars establishing the content of those laws. It did not submit any information on the conditions to be fulfilled for the applicant to be able to prohibit the use of the contested trade mark under the German, Lithuanian and Swedish laws.

Therefore, as far as the German, Swedish and Lithuanian non-registered marks BEARPROOF is concerned, the cancellation is not well founded under Article 8(4) EUTMR.

Consequently, as the applicant has failed to prove any of the grounds on which the application is based, the application must be rejected in its entirety.

Since the EUTM proprietor is the winning party on the reasons set above, there is no need to list and assess the evidence submitted by it as they would not change the outcome of the present decision.

Conclusion

In the light of the above, the Cancellation Division concludes that the application for invalidity should be rejected.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Janja FELC

Ioana MOISESCU

Jessica LEWIS

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.