CANCELLATION No 36 168 C (INVALIDITY)

Isabel Nehera, 349, chemin Elie, Sutton QC Ontario JOE 2K0, Canada, Natacha Sehnal, 3, plan de la Croix, 34980 Montferrier-Sur-Lez, France and Jean-Henri Nehera, Ewart Street, Burnaby British Columbia V5J 2W4, Canada (applicants), represented by William Woll, 13, rue Jean-Jacques Rousseau, 75001 Paris, France (professional representative)

a g a i n s t

Ladislav Zdút, Pod Rovnicami 67, 84101 Bratislava, Slovakia (EUTM proprietor), represented by Marks & Us, Marcas y Patentes, Ibañez de Bilbao 26, 8º dcha, 48009 Bilbao (Vizcaya), Spain (professional representative).

On 22/04/2020, 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 11 794 112 (figurative mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely:

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; Animal skins, hides; Trunks and travelling bags; Umbrellas and parasols; Walking sticks.

Class 24: Bed covers; Table covers.

Class 25: Clothing, footwear, headgear.

The applicant invoked Article 59(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicants argued that the contested EUTM includes the word ‘NEHERA’ which is the name of their grandfather (Annex 1). In fact, the company NEHERA was founded by Jan Nehera in the 1930s. It was a very famous brand in the Czech Republic selling clothes and accessories. On 01/01/1946, the company was 100 % nationalised by the government of President Benes. During the communist period, the brand was not used but remained famous throughout the country. In 2016, Natacha Sehnal discovered that the name ‘NEHERA’ was used by the EUTM proprietor without authorisation. She contacted the latter who answered that he had been trying to find somebody from the Nehera family in 2013 and 2014 but had not been successful (Annex 2). Therefore, Mr Zdút knew that the name was that of a famous brand and that some descendants could have rights over the name. Consequently, there is bad faith because Mr Zdút misled the public by suggesting that his brand ‘NEHERA’ is the continuator of the brand created by Jan Nehera and the former had no authorisation and knew that he should have it to use this brand.

In support of their observations, the applicants filed the following evidence:

Annex 1: printout from Wikipedia with information on Jan Nehera.

Annex 2: copy of emails sent in 2016 between Natacha Sehnal and the EUTM proprietor who replied to Natacha Sehnal: ‘In fact I am thrilled with the fact that somebody from the family of Jan Nehera is contacting us. Especially because we had been trying to find somebody down in 2013 and 2014 and we had not been successful.’

Annex 3: copy of certificate of marriage registration of Mrs Filiz Brinnier which indicates that she is the daughter of Mrs Libuse Nehera.

The EUTM proprietor argued that the applicants do not have a right over the name NEHERA, even if it is their surname. The applicants failed to demonstrate the creation of the trade mark and the additional four cumulative requirements needed to declare that the trade mark was applied for in bad faith, including a dishonest intention of the EUTM proprietor at the time of filing. The EUTM proprietor has not acted in bad faith since the earlier mark ‘NEHERA’ did not exist at the time he filed the application. In fact, the mark ceased to exist (if it really had existed, something which the applicants had not been able to prove either) in 1946. The applicants did not file any evidence that shows that the proprietor acted in bad faith. The only intention of Mr Zdút at the time of filing the mark ‘NEHERA’ was, as he himself confirms in the email sent to Ms Sehnal, as a tribute to, and a reminder of, the golden era of the textile industry in pre-Second World War Czechoslovakia.

In reply, the applicants claimed that, as shown by the exchange of emails, the EUTM proprietor was clearly aware that he was using an extremely famous trade mark confiscated by the communist regime. The Czech Industrial Property Office sent proof that the company NEHERA had protected at least two ‘NEHERA’ marks in 1936 (Annex 4), and therefore the ‘NEHERA’ brand existed. According to the applicants, the Czech Industrial Property Office only keeps records of the most significant trade marks in Czech history, which proves that ‘NEHERA’ was famous enough to be preserved by the national archives. The applicants further claimed that the EUTM proprietor worked for the company OZETA which itself claimed to be inspired by Jan Nehera’s work, as shown in a catalogue produced in 2000 (Annex 5).

In support of its observations, the applicants filed the following further evidence:

Annex 4: a letter from the Industrial Property Office of the Czech Republic dated 01/10/2019 with the patents 6413 and 6414 delivered in 1936 for the company NEHERA (in Czech and English).

Annex 5: a booklet of the company OZETA for its 60th anniversary (in Czech, English and German).

In reply, the EUTM proprietor argued that the mark ‘NEHERA’ had been famous in 1939, but not anymore. However, even though the mark is still famous, it is no longer in use or registered, and therefore he has every right to file an application for any mark he may find suitable, unless he is copying an existing trade mark or an existing right. Indeed, he was already the owner of an earlier Czech Republic trade mark for ‘NEHERA’ (figurative) protected for goods and services in Classes 3, 24, 25, 35 and 43, filed on 24/11/2006, which expired on 24/11/2016. It shows that he has already enjoyed the rights in the Czech Republic of a trade mark incorporating the element ‘NEHERA’. He provided information on the procedure of how a trade mark is protected.

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

Exhibit 1: an extract of the registration of the previous Czech ‘NEHERA’ mark, owned by Mr Zdút, in Czech and accompanied by its translation into English.

Exhibit 2: an extract of the registration certificate of another Czech trade mark ‘NEHERA’ filed in 1992 in the name of a different company, which, according to the EUTM proprietor, shows that anyone was permitted to file a mark under the name ‘NEHERA’. It is written in Czech and accompanied by its translation into English.

Exhibit 3: printouts from the internet with general information about trade marks.

BAD FAITH – 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.

Assessment of bad faith

The applicants argued that the EUTM proprietor knew that ‘NEHERA’ was the name of a famous brand and that some descendants could have rights on that name and, therefore, there was bad faith at the moment of the application for registration of the contested mark because the proprietor misled the public by suggesting that his brand ‘NEHERA’ was the continuator of the brand created by Jan Nehera without any authorisation.

As the applicants claimed and the EUTM proprietor admitted, the latter had been aware of the existence of the ‘NEHERA’ brand at the time of filing the EUTM since it was already famous in 1939. However, the mere fact that the EUTM proprietor may have had some knowledge about the ‘NEHERA’ brand is not sufficient for a conclusion of bad faith.

As stated in case-law, the fact that the EUTM proprietor knows or must know that the invalidity applicant has been using an identical/similar sign for identical/similar goods for which a likelihood of confusion may arise is not sufficient for a finding of bad faith (11/06/2009, C‑529/07, Lindt Goldhase, EU:C:2009:361, § 40). In order to determine whether there was bad faith, the EUTM proprietor’s intentions at the time of filing must also be taken into account.

Firstly, the applicants have not submitted any evidence to show that at the time of filing the contested mark the trade mark ‘NEHERA’ was used or registered. Indeed, the invalidity applicants have not proved that the mark ‘NEHERA’ existed at the moment of application for registration of the contested mark, that they have a right over the mark nor that they have been using the trade mark NEHERA in relation to any goods or services. They have only claimed to be descendants of Jan Nehera, who, according to the evidence submitted, was a textile entrepreneur who owned a network of more than 130 retail shops. The evidence submitted by the applicants, namely the certificate provided by the Czech Industrial Property Office, only proves the registration in 1936 of two marks in the name of the company NEHERA, one of those being the word mark ‘NEHERA’. However, there is no evidence that these marks are still registered or used, and that the applicants have a right over these marks.

As mentioned above, the applicants claimed that the EUTM proprietor’s intention when filling the contested mark was to mislead the public by suggesting that his brand ‘NEHERA’ is the continuator of the brand created by Jan Nehera.

Bad faith is found when it can be inferred that the purpose of the EUTM applicant is to ‘free-ride’ on the reputation of the invalidity applicant (14/05/2019, T‑795/17, NEYMAR, EU:T:2019:329, § 51) or on its registered marks and to take advantage of that reputation (08/05/2014, T‑327/12, Simca, EU:T:2014:240, § 56), even if those marks have lapsed (21/12/2015, R 3028/2014‑5, PM PEDRO MORAGO (fig.), § 25). However, the applicants’ arguments rely on mere speculation in finding that the EUTM proprietor’s intention had been to take undue advantage of their grandfather’s renown in order to obtain certain financial advantages. The applicants submitted no evidence that may prove that the intention of the EUTM proprietor in filing the contested mark was dishonest. A presumption cannot be established that knowledge of a person’s renown is sufficient to ascertain bad faith on the part of the EUTM proprietor for registration of a trade mark bearing the same name. Moreover, the applicants did not file any evidence that proves that the trade mark ‘NEHERA’ or Jan Nehera himself enjoyed a continued reputation or renown at the moment of the application for registration of the contested mark.

Consequently, there is no clear indication that leads to believe that the EUTM proprietor had a dishonest intention at the time of filing of the contested trade mark and, therefore, the applicants’ arguments are dismissed as unfounded.

Conclusion

In light of the above principles and of the circumstances and facts presented by the applicants, the Cancellation Division finds that the applicants failed to prove their allegation that the EUTM proprietor was acting in bad faith when filing the contested EUTM. The applicants confined themselves to statements not supported by sufficient evidence or facts to lead to the conclusion that the EUTM proprietor had a duty to refrain from filing the contested mark. As a consequence, the applicants cannot be considered to have established a dishonest intention on the part of the EUTM proprietor nor any other unfair practice involving lack of good faith on his part.

Consequently, 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 applicants are the losing party, they 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

Carmen SÁNCHEZ PALOMARES

Ana MUÑIZ RODRIGUEZ

Michaela SIMANDLOVA

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.