DECISION

of the Fifth Board of Appeal

of 28 October 2019

In Case R 688/2019-5

Polat Dönerproduktion GmbH
Krefelder Straße 662 41066 Mönchengladbach Germany	Cancellation applicant / Appellant

represented by Feuerhake Anwaltskanzlei, Obere-Masch-Str. 22, 37073 Göttingen, Germany

v

POLAT FOOD SERVICE, S.L.
c/ Metalurgicos, 4 41980 La Algaba Spain	EUTM proprietor / Defendant

represented by Gt. De Propiedad Industrial, S.L., c/Capitán Haya, núm. 38-7º-izda., 28020 Madrid, Spain

APPEAL relating to Cancellation Proceedings No 15 842 C (European Union trade mark registration No 16 437 402)

The Fifth Board of Appeal

composed of G. Humphreys (Chairperson and Rapporteur), V. Melgar (Member) and A. Kralik (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 7 March 2017, POLAT FOOD SERVICE, S.L. (‘the EUTM proprietor’) sought to register the figurative mark

for the following list of goods:

Class 29 - Meats; Fish, seafood and molluscs; Oils for food.

The EUTM proprietor claimed the colours:

Dark Blue; Light Grey.

2. The application was published on 14 March 2017 and the mark was registered on 21 June 2017.

3. On 8 September 2017, Polat Dönerproduktion GmbH (‘the cancellation applicant’) filed a request for a declaration of invalidity of the registered mark for all the above goods.

4. The grounds of the request for a declaration of invalidity were those laid down in Article 59(1)(b) EUTMR.

5. The cancellation applicant claimed that it run a family business of Turkish origin using the company name ‘POLAT’ and the logo .

6. According to the cancellation applicant, in December 2014 and February 2015 his company sold goods to the Spanish company Taberna Medieval SL which was later renamed as ‘POLAT’ and this company attempted to register ‘POLAT’ based trade marks in Spain and Portugal.

7. The cancellation applicant filed the following evidence in support of its claims:

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

• Evidences 2 and 3: Invoices of 6 December 2014 and of 11 February 2015 issued by Polat Fleisch GmbH (the same address as the cancellation 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 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 3 August 2017 addressed by the cancellation applicant’s Spanish attorney to the EUTM proprietor (hereinafter the ‘First Letter’);

• Evidences 5 to 15: Screenshots of the EUTM proprietor’s Facebook page with a printout date on 10 August 2017 (and some with references to posts uploaded in December 2016), showing, inter alia, the signs  , , and . The cancellation 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 August 2017 addressed by the cancellation applicant’s German representatives to the EUTM proprietor (hereinafter the ‘Second Letter’).

8. In reply, the EUTM proprietor requested a suspension of the proceedings pending the outcome of other disputes between the parties. He referred to its earlier Spanish registration of the mark ‘POLAT’. He also argued that its company ‘POLAT FOOD SERVICE, S.L.’ was a client of a banking entity since November 1998 and was issued a fiscal identification number in 2000. The EUTM proprietor submitted a declaration from a Spanish bank (Banco Popular) and a confirmation from the tax office in support of these allegations.

9. By decision of 28 January 2019 (‘the contested decision’), the Cancellation Division rejected the request for a declaration of invalidity in its entirety. It gave, in particular, the following grounds for its decision:

• The parties appear to be involved in opposition proceedings before the Office and in national litigation before a Spanish Court (the EUTM proprietor filed an opposition against EUTM application filed by the cancellation applicant, relying on its Spanish registration). While the EUTM proprietor requested that the current proceedings are suspended pending the outcome of the case before the Spanish authorities, the Office does not deem the suspension necessary. In any event, none of the parties filed sufficient evidence relating to the national proceedings in the language of the proceedings;

• The cancellation applicant alleges that, when applying for the contested mark (and for the Spanish mark, filed earlier), the EUTM proprietor (now Polat Food Service, previously trading under the name Taberna Medieval) had knowledge of the cancellation applicant’s use of its logo 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, the EUTM proprietor is also using ‘the new’ logo of the applicant and opposed to its registration as an EUTM based on the Spanish mark;

• The Cancellation Division considers that the evidence filed in support of these claims is clearly insufficient to demonstrate that the application for the contested EUTM was dishonest and infringed the cancellation applicant’s rights. While it is clear that the verbal element of the contested EUTM (‘POLAT’) is identical to the most distinctive element of the cancellation applicant’s logo and they relate to the same or similar goods (Class 29), these elements alone are not sufficient to establish bad faith on the part of the EUTM proprietor. Such conflict should be rather solved on the basis of relative grounds for invalidity;

• The cancellation applicant failed to demonstrate that the EUTM proprietor knew (or should have known) of the use of the sign at the time of filing the contested EUTM. The invoices relied upon by the cancellation applicant were addressed to Taberna and not to the EUTM proprietor. There is no further document on file to back up the cancellation 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 EUTM proprietor shows that Polat Food Service, S.L., has been the client of Banco Popular since 1998 and it has been assigned a Spanish tax number (NIF) in July 2000), it has to be noted that the EUTM proprietor’s Spanish mark, filed on 20 October 2014, predates the invoices;

• Admittedly, the Cancellation Division has noted that the business address of the EUTM proprietor, as referenced in the communication from the Spanish tax office (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;

• In addition to the clear lack of evidence of bad faith, it is observed that the contested EUTM has been filed after the EUTM proprietor had registered a Spanish mark. 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).

10. On 27 March 2019, the cancellation applicant filed an appeal against the contested decision, requesting that the decision be entirely set aside. The statement of grounds of the appeal was received on 27 May 2019.

11. No response was filed.

Submissions and arguments of the cancellation applicant

12. The arguments raised in the statement of grounds may be summarised as follows:

• On 9 May 2019, the Barcelona Court rendered a judgment in the case between the parties. A translation of the judgment is submitted. That court found the EUTM proprietor liable of unfair competition and ordered the EUTM proprietor to cease using ‘POLAT’ marks, change its company name and internet domain, and to transfer its Spanish ‘POLAT’ marks (M 3 531 534 and M 3 655 958) to the cancellation applicant;

• The Cancellation Division, when dismissing the action for invalidity, infringed the cancellation applicants’ right to be heard. After the EUTM proprietor’s comments on the application for invalidity, the Cancellation Division informed the cancellation applicant that ‘no further observations should be submitted’. The cancellation applicant was therefore barred from submitting further evidence;

• Therefore, the cancellation applicant ceases this opportunity to make a supplementary statement in the appeal proceedings and to submit further corresponding evidence;

• In its decision, the Cancellation Division considers that there is no evidence that there is a link between TABERNA MEDIEVAL SL and the EUTM proprietor. As shown from the extract from the Spanish Commercial Register submitted herewith, this is the same company which changed name. The Cancellation Division misinterpreted the content of the documents submitted by the EUTM proprietor. While they demonstrate that the company operated since 1998, they do not prove that it operated under the name ‘POLAT FOOD SERVICE’. In fact, the change of name took place on 17 October 2016;

• Also the company that filed a Portuguese application was related to the EUTM proprietor which is confirmed by the findings of the Spanish Court;

• In this case, a Spanish competitor deliberately named itself after a well known wholesaler from whom it had previously purchased goods. Knowing the company name, a simplified trademark representation of the old logo was specifically applied for and the company name was plagiarized without having any reference to the name Polat. On the one hand, this approach is unethical and, on the other hand, it contradicts honest commercial and business practices.

Reasons

13. All references made in this decision should be seen as references to the EUTMR (EU) No 2017/1001 (OJ 2017 L 154, p. 1), codifying Regulation (EC) No 207/2009 as amended, unless specifically stated otherwise in this decision.

14. The appeal complies with Articles 66, 67 and Article 68(1) EUTMR. It is admissible.

Confidentiality request

15. The Board notes that the cancellation applicant marked its submissions and evidence filed on appeal as being confidential.

16. In accordance with Article 114(4) EUTMR, files may contain certain documents which are excluded from public inspection, e.g. parts of the file which the party concerned showed a special interest in keeping confidential.

17. In the event that a special interest in keeping a document confidential in accordance with Article 114(4) EUTMR is invoked, the Office must check whether a special interest is sufficiently shown. Such a special interest must exist because of the confidential nature of the document or its status as a trade or business secret.

18. In the present case, the cancellation applicant has not given any reasons as to why Article 114(4) EUTMR would be applicable with respect to its submissions.

19. Indeed, the documents do not contain any data or information having a prima facie confidential nature. Likewise, the Board has not found any indication in the statement of grounds that could justify the existence of a special interest (31/01/2008, R 966/2007-2, MAKO (fig.) / MALO, MALO (fig.), § 11-13; 03/03/2008, R 429/2007-2, KINDERMEDIA KINDERMEDIA (fig.) / KINDER et al. § 22-24). In addition, these arguments and evidence supplement the previous submissions which were not claimed to be confidential and are detailed in a generally accessible decision of the Cancellation Division.

20. It follows that the confidentiality request cannot be accepted.

Admissibility of evidence filed before the Board

21. It is observed that, together with the appeal, the cancellation applicant filed additional evidence consisting, in particular, of a recent judgment of a Barcelona Court, dated 9 May 2019, and an extract from the Commercial Register.

22. The Board recalls that, in accordance with Article 95(2) EUTMR, the Office may disregard facts or evidence which are not submitted in due time by the parties concerned. That provision grants the Board discretion to decide, while giving reasons for its decision, whether or not to take into account facts and evidence submitted out of time (13/03/2007, C-29/05 P, Arcol, EU:C:2007:162, § 43).

23. As provided by Article 27(4) EUTMDR, the Board of Appeal may accept facts or evidence submitted for the first time before it only where those facts or evidence are on the face of it, likely to be relevant for the outcome of the case and they have not been produced in due time for valid reasons, in particular where they are merely supplementing relevant facts and evidence which had already been submitted in due time, or are filed to contest findings made or examined by the first instance of its own motion in the decision subject to appeal.

24. In the present case, the evidence filed before Board appears to be of relevance for the case and it supplements the evidence submitted in due time before the Cancellation Division. In addition, the Spanish court judgment has been rendered after the decision of the Cancellation Division so it could not have been submitted earlier and the extract from the Commercial Register relates to apparently erroneous finding of the Cancellation Division based on misleading or incomplete evidence from the EUTM proprietor.

25. In view of the foregoing, the Board finds the new evidence admissible.

Bad faith

26. According to Article 59(1)(b) EUTMR, an EU trade mark shall be declared invalid if the EUTM proprietor was acting in bad faith when he filed the application for the trade mark.

27. The concept of ‘bad faith’ referred to in Article 59(1)(b) EUTMR is not defined, delimited or even described in any way in EU legislation. Therefore, its meaning and scope must be determined by considering its usual meaning in everyday language, whilst also taking into account the context in which it occurs and the objectives pursued by EUTMR (12/09/2019, C-104/18P, STYLO & KOTON (fig.), EU:C:2019:724, § 43).

28. In accordance with its usual meaning in everyday language, the concept of ‘bad faith’ presupposes the presence of a dishonest state of mind or intention. That concept must, moreover, be understood in the context of trade mark law, which is that it must manifest itself in the course of trade.

29. In order to determine whether there was bad faith, consideration must be given to the applicant’s intention at the time when it filed the application for registration. It must be observed in that regard that the applicant’s intention at the relevant time is a subjective factor which must be determined by reference to the objective circumstances of the particular case (12/09/2019, C-104/18P, STYLO & KOTON (fig.), EU:C:2019:724, § 45-47, 11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 41-42).

30. The burden of proof for the facts from which bad faith is claimed to follow, lies on the cancellation applicant. This is in line with the general principle that good faith is to be presumed.

31. The following three factors can be particularly relevant when assessing whether the EUTM proprietor was acting in bad faith: (i) the fact that the applicant knows or must know that a third party is using an identical or similar sign for identical or similar goods or services capable of being confused with the sign for which registration is sought; (ii) the applicant’s intention to prevent that third party from continuing to use such a sign; and (iii) the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought (11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 37 and 53 and 27/06/2013, C 320/12, Malaysia Dairy, EU:C:2013:435, § 36-37).

32. In the present case, the cancellation applicant argued that, before filing the contested EUTM, the EUTM proprietor purchased goods from the cancellation applicant. These goods bore the logo , used by the cancellation applicant and the indication ‘POLAT Dönerproduktion & Fleischgroßhandel’.

33. This would indicate, according to the cancellation applicant, that the EUTM proprietor had knowledge of the cancellation applicant’s trading activities under the name ‘POLAT’.

34. The Cancellation Division found, however, that the invoices were issued to a company ‘Taberna Medieval SLU’ whereas the EUTM proprietor’s name was ‘POLAT FOOD SERVICE’ and there was no evidence of any link between these two entities.

35. The EUTM proprietor filed evidence from a Spanish bank and tax office confirming that it was a client of a banking entity since November 1998 and was issued a fiscal identification number in 2000. The EUTM proprietor failed to mention, however, a slight but relevant detail that the company traded under the name ‘TABERNA MEDIEVAL SLU’ until 17 October 2016 and only then changed its name to ‘POLAT FOOD SERVICE’.

36. In view of the additional evidence filed by the cancellation applicant (an extract from the Commercial Register confirming that the EUTM proprietor is in fact the same entity as TABERNA MEDIEVAL SLU), there can be no doubt that, prior to the filing of the contested mark, the EUTM proprietor not only knew about the EUTM proprietor’s used of ‘POLAT’ logo and company name by the cancellation applicant but also entered into business relations with cancelation applicant by purchasing products as shown in the invoices dated 6 December 2014 and 11 February 2015.

37. In addition, it appears from the additional evidence filed (agreement between the cancellation applicant and Surkebab S.L., a company with the same address as Taberna Medieval SLU and evidence relating to the Portuguese filing of a ‘POLAT’ mark, opposed by the cancellation applicant), an attempt was made by an entity related to the EUTM proprietor who also tried to apply for ‘POLAT’ trade mark in Portugal.

38. While the Cancellation Division considered that these allegations of the EUTM proprietor were not backed up by evidence, in view of the additional evidence and the findings of the Spanish Court, the dishonest intention of the EUTM proprietor when filing the mark at issue is beyond any doubt.

39. Insofar as the Cancellation Division considered that the filing of the contested mark followed a commercial logic, that is extending the protection of a national mark, this reasoning can no longer apply in view of the judgment of the Barcelona Court finding the EUTM proprietor liable on unfair competition and ordering the transfer of the Spanish mark to the cancellation applicant.

40. It is finally observed that the only submissions made by the EUTM proprietor before the Cancellation Division were in fact an attempt to mislead the Office by claiming that it traded as ‘POLAT’ since 1999. On the other hand, the EUTM proprietor filed no observations in reply to the appeal and has not commented on the extensive evidence showing its bad faith.

41. In these circumstances, the Board finds no possible explanation to the EUTM proprietor’s acts other than an attempt to misappropriate the ‘POLAT’ trade mark which it knew of its existence and that it had been used by the cancellation applicant.

42. The contested decision is annulled and the contested mark is declared invalid.

Costs

43. Pursuant to Article 109(1) EUTMR and Article 18 EUTMIR, the EUTM proprietor, as the losing party, must bear the cancellation applicant’s costs of the cancellation and appeal proceedings.

44. As to the appeal proceedings, these consist of the appeal fee of EUR 720 and the cancellation applicant’s costs of professional representation of EUR 550.

45. As to the cancellation proceedings, the EUTM proprietor must reimburse the cancellation fee of EUR 630 and the cancellation applicant’s cost of professional representation of EUR 450. The total amount is fixed at EUR 2 350.

Order

On those grounds,

THE BOARD

hereby:

1. Annuls the contested decision;

2. Declares EUTM No 16 437 402 invalid for all the contested goods, namely: Meats; Fish, seafood and molluscs; Oils for food (Class 29);

3. Orders the EUTM proprietor to bear the cancellation applicant’s costs incurred in the appeal and cancellation proceedings in the amount of EUR 2 350.

Signed G. Humphreys

Signed V. Melgar

Signed A. Kralik

Registrar: Signed H.Dijkema