CANCELLATION No 15 842 C (INVALIDITY)

Polat Dönerproduktion GmbH, Krefelder Straße 662, 41066 Mönchengladbach, Germany (applicant), represented by Feuerhake Anwaltskanzlei, Obere-Masch-Str. 22, 37073 Göttingen, Germany (professional representative)

a g a i n s t

Polat Food Service, S.L., c/ Metalurgicos, 4, 41980 La Algaba, Spain (EUTM proprietor), represented by GT. de Propiedad Industrial, S.L., c/Capitán Haya, núm. 38-7º-izda., 28020 Madrid, Spain (professional representative).

On 28/01/2019, 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

On 08/09/2017, the applicant filed an application for a declaration of invalidity against European Union trade mark No 16 437 402 (figurative mark), filed on 07/03/2017 and registered on 21/06/2017 (the EUTM). The request is directed against all the goods covered by the EUTM, namely: meats; fish, seafood and molluscs; oils for food in Class 29. The applicant invoked Article 59(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The case for the applicant

The applicant’s company is a family business of Turkish origin (whose owner is named ‘Polat’), engaged in the distribution of halal-certified kebab throughout Europe. In December 2014 and February 2015, the Spanish company Taberna Medieval SL (hereinafter ‘Taberna’) purchased goods from the applicant and therefore ‘knew’ the logo the applicant was using at that time on its invoices (i.e. a kebab skewer in front of the globe subtitled Polat Dönerproduktion, hereinafter the ‘Logo’).

On 23/02/2015, Taberna registered in bad faith the Logo in Spain (Spanish trade mark registration No 3 531 534 hereinafter the ‘Spanish Mark’), currently under cancellation proceedings following the applicant’s request. On 18/10/2016, Taberna ‘renamed itself in bad faith in Polat Food Service SL’ (the EUTM proprietor), with the sole purpose of causing confusion and taking advantage of the applicant’s good business reputation.

The contested EUTM is ‘identical to the essential elements of the new logo’ of the applicant, which the latter applied for as an EUTM (application No 15 895 519 ) and which is currently under opposition proceedings brought by the proprietor on the basis of the Spanish Mark. Furthermore, it is argued that Taberna is also using the new logo without having the applicant’s permission.

In support of its observations, the applicant filed the following evidence (the English translation of the documents in Evidences 1 to 4, 11 and 16, initially in German or Spanish followed on 01/11/2017 by fax, on 06/11/2017 by registered mail and on 07/11/2017 by electronic filing):

• Evidence 1: Invoice of 25/08/2004 issued by idee medien logistik GmbH and addressed to the applicant for, among others, development POLAT logo (no image of the sign provided).

• Evidences 2 and 3: Invoices of 06/12/2014 and of 11/02/2015 issued by Polat Fleisch GmbH (same address as the applicant in the present proceedings) and addressed to Taberna Medievsal SLU (based in Spain), in relation to Polat test product (chicken meat and turkey veal) and respectively chicken thighs (hereinafter the ‘Invoices’). The sign is depicted at the top of the Invoices together with the indication ‘POLAT Dönerproduktion & Fleischgroßhandel’.

• Evidence 4: Cease and desist letter of 03/08/2017 addressed by the applicant’s Spanish attorney to the EUTM proprietor (hereinafter the ‘First Letter’).

• Evidences 5 to 15: Screenshots of the proprietor’s Facebook page with a printout date on 10/08/2017 (and some with references to posts uploaded in December 2016), showing, inter alia, the signs  , , and . The applicant only submitted the English translation of one screenshot (Evidence 11) containing information on the company Polat Food Service S.L. (manufacturers of ready meals, specialised in catering franchises and organised kitchens), while the remaining ones are in Spanish.

• Evidence 16: Cease and desist letter of 10/08/2017 addressed by the applicant’s German representatives to the EUTM proprietor (hereinafter the ‘Second Letter’).

The case for the EUTM proprietor

The EUTM proprietor argues that ‘bad faith cannot exist’ since the name ‘Polat’ was used by its company prior to the dates shown in the documents submitted by the applicant. It further explains that, on the basis of the Spanish Mark, it filed an opposition against the applicant’s EUTM application No 15 895 519 and requests the suspension of the cancellation proceedings until a final decision is taken in the lawsuit the applicant initiated on 28/11/2017 against the Spanish Mark.

In support of its observations, the EUTM proprietor filed the following evidence:

• Item 1: Document (in Spanish and English translation) issued on 23/11/2017 by Banco Popular Español S.A. and attesting to the fact that the proprietor’s company (Polat Food Service, S.L., with CIF B41949447) has been a client of the bank since November 1998.

• Item 2: Communication of accreditation card of the fiscal identification number (NIF) issued by the Spanish Tax Agency/Delegation of Andalusia/Seville and showing, among others, that the company Polat Food Service SL, having fiscal identification card B41949447 has been assigned a NIF on the date of 17/07/2000 (document in Spanish and English translation).

• Item 3: Office’s letter of 08/01/2018 sent to the proprietor (as opponent) by means of which the latter was notified of the suspension of the opposition proceedings no B 2 847 534 since the Spanish Mark is ‘at risk’. The same annex includes: (i) the translation into English of the Second Letter, (ii) email correspondence dated in December 2017 between the applicant’s Spanish lawyer and the German representative whereby the former informs on the actions taken before the Commercial Court of Barcelona on 01/12/2017 and (iii) a copy of the action lodged with the court (document in Spanish, no English translation).

Preliminary remark on the Spanish national proceedings concerning the Spanish Mark

As shown above, the parties are also involved in opposition proceedings before the Office initiated by the proprietor (based on the Spanish Mark) against the applicant’s EUTM trade mark application No 15 895 519 and which are currently suspended following the applicant’s request to have the Spanish Mark cancelled.

On 12/03/2018 the proprietor requested the Office to also have the present cancellation proceedings stayed until a final decision is reached in the Spanish national proceedings and this has been refused by the Office by letter of 22/03/2018.

Although at the moment of taking the present decision, there is no evidence on file on a final decision having been reached in the said national proceedings, the Cancellation Division does not deem it necessary to suspend the current invalidity proceedings awaiting for a decision to be taken by the Spanish competent authorities.

First of all, it is noted that neither the proprietor (nor the applicant for that matter, although it would have been in its interest) filed an English translation of the cancellation action against the Spanish Mark (or submitted the evidence filed in support thereto) so that the Cancellation Division can determine and assess whether a suspension would be appropriate under the circumstances of the case. Second, and more importantly, in the present proceedings the applicant plainly failed to establish that the contested EUTM had been filed in bad faith (as it will be shown in detail in the following section of this decision). As is apparent from the extract from the official database of the Spanish Patent and Trade Mark Office (the ‘Extract’) made available before the Office in the mentioned opposition proceedings, the Spanish Mark has been applied for on 20/10/2014, which is before the applicant’s evidence which supposedly would show use of the Logo. Furthermore, this time lapse between the filing date of the Spanish Mark (October 2014) and that of the contested EUTM (March 2017) when coupled with the clear lack of evidence from the applicant on the alleged bad faith of the proprietor seems to point in favour of the proprietor rather than to be a factor indicating the latter’s bad faith. Indeed, it follows from case law that a possible legitimate objective of the EUTM proprietor is when the filing of the EUTM followed a commercial logic, that is extending the protection of a national mark by registering it as an EUTM (see by analogy judgement of 14/02/2012, T‑33/11, Bigab, EU:T:2012:77).

Therefore, the Cancellation Division will now proceed to the assessment of the claim of bad faith based on the documents before it.

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).

The burden of proof of the existence of bad faith lies with the invalidity applicant; good faith is presumed until the opposite is proven.

Outline of the relevant facts

Reference is made to the facts and evidence set out in detail above in section ‘Summary of the Parties’ Arguments’.

Assessment of bad faith

One situation which may give rise to bad faith is when a commercial entity has obtained some degree of legal protection by virtue of the use of a sign on the market, which a competitor subsequently registers with the intention of competing unfairly with the original user of the sign.

These are precisely the circumstances on which the applicant seeks to rely in the present proceedings.

In such instances, the Court of Justice of the European Union (11/06/2009, C‑529/07, Lindt Goldhase, EU:C:2009:361, § 48 and 53) has stated that the following factors in particular should be taken into consideration:

1. the fact that the EUTM proprietor knows or must know that a third party is using an identical or similar sign for an identical or similar product capable of being confused with the contested EUTM;

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

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

4. whether the EUTM proprietor in filing the contested EUTM was in pursuit of a legitimate objective.

The abovementioned are only examples drawn from a number of factors which can be taken into account in order to determine whether or not the applicant was acting in bad faith when filing the application; account may also be taken of other factors (14/02/2012, T‑33/11, Bigab, EU:T:2012:77, § 20-21 and 21/03/2012, T‑227/09, FS, EU:T:2012:138, § 36).

In the present case, the facts, evidence and arguments put forward by the applicant may be summarised in the latter’s basic assumption that Taberna, ‘a competitor’, had knowledge of the Logo (which the applicant used on its invoices), registered it in bad faith in Spain (as the Spanish Mark), then changed its name into Polat Food Service, S.L. and registered the EUTM (also in bad faith) with the sole aim of redirecting the applicant’s customers and ‘pretending’ its products originate from the applicant. Furthermore, ‘Taberna (now Polat Service SL)’ is also using ‘the new’ logo of the applicant and opposed to its registration as an EUTM based on the Spanish Mark.

However and in the context of the overall assessment of the present case, the Cancelation Division considers the facts and evidence submitted by the applicant to be clearly insufficient to demonstrate that the application for the contested EUTM was dishonest and infringed the applicant’s rights, for the reasons set out below.

In the first place, it cannot be disputed that the verbal element of the contested EUTM is identical to the most distinctive element of the sign featured in the Invoices. Nor can it be denied that, as evidenced by the Extract, the Spanish Mark ( ) is virtually identical to the above sign. The same is valid as regards the signs and , shown on the proprietor’s Facebook page (with an upload date of 06/12/2016 and 11/12/2016) and the applicant’s EUTM application (filed on 30/09/2016).

As regards the goods covered by the EUTM in Class 29, some are identical or at least similar to the goods evidenced in the Invoices, while the remaining goods in this class do appear, at least prima facie, to belong to related or at any rate not so distant markets.

However, the mere fact that the contested EUTM and the Logo share the identical word ‘Polat’ (allegedly the name of the owner of the applicant’s company, although no evidence has been filed to support this), is not in itself sufficient to automatically establish bad faith on the part of the EUTM proprietor, where there are no other relevant factors (01/02/2012, T‑291/09, Pollo Tropical chicken on the grill, EU:T:2012:39, § 90). Indeed, the registration of an identical (or supposedly similar) sign is not a clear indication of an abusive or fraudulent intention. It is rather an indication that the EUTM proprietor intended to use its mark on the marketplace in accordance with the trade mark functions set out in the EUTMR. Moreover, for conflicts with similar/identical signs, the EUTMR foresees a different solution under Article 60 EUTMR, ‘Relative grounds for invalidity’. For this reason alone the case cannot be subsumed under the notion of ‘bad faith’ (14/06/2010, R 1795/2008‑4, ZAPPER-CLICK, § 19).

In the second place, the applicant failed to demonstrate that the EUTM proprietor knew of the use of the sign .

Indeed, the invalidity applicant has not submitted any evidence that could support its claims that at the time of filing the contested EUTM, the EUTM proprietor was aware of any use by the invalidity applicant of an identical/similar sign for identical and/or similar goods for which there could be a likelihood of confusion.

The applicant only relies on the Invoices which are however addressed to Taberna and not to the EUTM proprietor and there is no further document on file to back up the applicant’s assertions that Taberna would have ‘renamed itself in bad faith’ as Polat Food Service, S.L. But even assuming that were the case (although the evidence from the proprietor seems to point to a different situation – see below in the following paragraph), it has to be noted that as shown by the Extract the filing date of the Spanish Mark (i.e. 20/10/2014) actually predates the Invoices. The Cancellation Division also points out that there is no clear evidence on file that the Spanish Mark has been applied for/registered by Taberna. The only information that can be inferred from the Extract is that on 05/08/2016 there was a request to transfer the Spanish Mark to the EUTM proprietor and that the granting of such transfer was published on 24/11/2016.

The applicant’s statements appear also to be contradicted by the evidence submitted by the proprietor (see above under Items 1 and 2). These documents show that Polat Food Service, S.L. has been assigned a NIF in July 2000 and has been a client of Banco Popular Español S.A. since November 1998, that is long before the Invoices were issued (December 2014 and February 2015) or even before the ‘creation’ of the ‘Polat’ logo (April 2004).

Admittedly, the Cancellation Division has noted that the business address of the EUTM proprietor, as referenced in the communication from the Spanish Tax Agency (Item 2 above) is the same address as evidenced on the Invoices for Taberna. This fact is however inconclusive and clearly not sufficient to prove a connection between these two companies in the absence of further evidence, since it is a very common practice for one or more completely separate and independent business entities to have their registered seat at the same address.

It cannot be denied that one of the screenshots of the proprietor’s Facebook page (a picture of a pulled pork sandwich with an upload date in 11/12/2016) contains a reference to Taberna Medieval ‘un sabor muy caracteristico de la antigua cocina a fuego lento con la gran experiencia de esta marca Taberna Medieval’). The document is nonetheless in Spanish and no English translation has been provided by the applicant so that the context in which the reference is used can be eventually clarified. Furthermore, a mere reference to ‘esta marca Taberna Medieval’ does not prove, alone or in the context of the overall assessment of the entire evidence on file the actual/presumed knowledge of the proprietor of the use of the Logo or its bad faith at the moment of filing for the contested EUTM. Nor is it convincing evidence of the existence of an economic connection between the two companies.

Finally, it is noted that the First Letter states that previous business relations between our client (i.e. the applicant) and POLAT FOOD SERVICE, S.L. and/or other related companies and individuals – which are fully documented, according to the documentation in the possession of our client – prove beyond all doubt that POLAT FOOD SERVICE, S.L. had prior knowledge of both the existence of our client and its company name, its trade names and distinguishing marks. With reference to the above, our client is aware of the frustrated attempt to register a similar mark to those used by POLAT DONERPRODUKTION GMBH in Portugal by related companies (application for national trade mark in Portugal 000567020, finally refused). Yet again no evidence has been submitted before the Cancellation Division to back up such statements. If the relations between the EUTM proprietor and other related companies and individuals were indeed fully documented, then the applicant should have had no difficulty in adducing such proof in the present proceedings.

In the third place, the applicant also failed to establish a presumption of knowledge on the part of the EUTM proprietor. In this regard it is recalled that the Court of Justice of the European Union, when defining some of the relevant factors for assessment of bad faith, held that one of those factors is whether the EUTM proprietor knew or ‘must have known’ about the previous use of the sign (emphasis added). With regard to the expression ‘must know’, a presumption of knowledge, by the EUTM proprietor, of the use by a third party of an identical or similar sign may arise, inter alia, from general knowledge in the economic sector concerned of such use, and that knowledge can be inferred, inter alia, from the duration of such use. The more that use is long-standing, the more probable it is that the EUTM proprietor will, when filing the application for registration, have knowledge of it (11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, §39).

In the present case, however, the documentation on file hardly shows any use (let alone long-standing) of the Logo ( ). The only evidence made available by the applicant in this regard are the Invoices, which cannot constitute sufficient proof to assume that the EUTM proprietor must have known of the existence of the applicant’s sign and/or of the latter’s rights to it, for the reasons already given above when discussing the alleged actual knowledge of the proprietor.

It is also noted that the applicant submitted (see Evidence 1) an invoice dated in 2004 in connection with the development of the ‘Polat’ logo. While there are references to a doner and to the EEC-logo (digital retouching work on doner, reproduction of the EEC-Logo), no actual image of said logo was provided so that it can be ascertained that the sign is identical or at least similar to the one on the Invoices. In any event, even if that were the case, it is not possible to determine from this document alone if and to which extent the applicant actually carried out activities under the sign in question until December 2014 (when the younger of the Invoices was issued). It must be therefore considered that the evidence made available by the applicant is not of such a nature as to raise expectations that the proprietor must have known of the sign in question.

The applicant also contends that the proprietor is using without permission its new logo ( ) and submitted screenshots from the proprietor’s Facebook page to support its claims. It is true that the documents that show a similar sign are dated shortly after the filing of the applicant’s EUTM application. Nevertheless, in the context of an overall evaluation of the evidence on file, these documents are inconclusive and not sufficient to lead to a different conclusion that the one already reached above. Indeed, it may very well the case that the proprietor had already been using the similar sign shown on its Facebook page before those pictures were uploaded or before the applicant’s EUTM was filed.

In the fourth place, it remains necessary to assess the applicant’s claims in respect of the dishonest intentions of the EUTM proprietor (to cause confusion, to take advantage of the applicant’s good business reputation, to redirect the applicant’s customers and to pretend Taberna Medieval SL’s products originate from the applicant). It is noted from the outset that the filing of the notice of opposition against the applicant’s EUTM application No 15 895 519 per se is not an indicator of possible bad faith on the part of the EUTM proprietor. It is merely an expression of a diligent trade mark owner that protects its prior right; further facts would be required (04/05/2011, R 1354/2010‑1, yello, § 17).

Furthermore, the evidence filed is far from demonstrating the use of the sign (or of the ‘new logo’ for that matter), let alone any good business reputation, distribution of halal certified products ‘throughout Europe’ or that the applicant would be ‘one of the largest producers of Doner Kebabs in Europe’.

For the sake of completeness, it is acknowledged that the proprietor did not file any detailed observations in the present proceedings that could have explained for example how the contested EUTM was created, that may have justified the use of the signs similar to the new logo of the applicant as shown by the Facebook screenshots or provided any further clarifications as to the company Taberna. It merely requested the suspension of the cancellation proceedings and did not supplement its initial observations and evidence within the one day equity deadline set in the Office letter of 22/03/2018.

However, in the context of an overall assessment of all the factors relevant to the case, it is considered that these facts alone are not clearly enough to allow for a conclusion that when filing the contested EUTM the proprietor intended to lay its hands on the applicant’s Logo or new logo in a manner that could be deemed to fall short of the standards of acceptable commercial behaviour.

It is upon the applicant to adduce all necessary evidence to prove bad faith. Good faith is presumed until the contrary is proven. In the present case, as illustrated above the applicant failed to put forward sufficient facts and evidence that would allow for a positive finding of bad faith. The documents filed do not demonstrate that at the time of filing of the contested EUTM, the proprietor knew or must have known of the use of the Logo or new logo. They are also insufficient to allow for a conclusion that the proprietor actually intended to prevent the applicant from entering the EU market, to take advantage of its ‘goods business reputation’ or to show the proprietor’s dishonest intentions at the moment of the filing the contested EUTM.

Conclusion

In the light of the above, the Cancellation Division concludes that the application 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

Ioana MOISESCU

Oana-Alina STURZA

José Antonio GARRIDO OTAOLA

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.