Evidence of bad faith trademark filling
The EUIPO’s cancellation division considers the notion of bad faith in a cancellation action filed by the Swiss company VF INTERNATIONAL SAGL against the European Union Trademark (EUTM) N°10015352 of the French company SUPER BRAND LICENSING
VF INTERNATIONAL SAGL claimed rights on the non-registered trademark GEOGRAPHIC and the non-registered signs and , associating the name GEOGRAPHIC with the Norwegian flag, claiming intensive use of these signs to designate bags and clothes in the course of trade.
In support of its request, VF INTERNATIONAL SAGL argued that the clothes with the contested sign present strong similarities with the NAPAPIJRI parka (especially the particular apposition of the sign representing the Norwegian flag on a parka).
On the basis of the article 59§1 of the EUTM, the EUIPO specifies the conditions of trademark filing in bad faith recalling that there is no accurate legal definition of this term.
Indeed, “Bad faith is a subjective status based on the applicant’s intentions when filing an European Union trademark. Usually, intentions alone have no legal consequences. Proof of bad faith requires the evidence of a dishonest intention from the contested trademark’s owner and objective rule allowing to analyze this action and to determine then if it constitutes an act of bad faith” (C529/07, Lindt Goldhase).
The burden of proof is on the plaintiff since the owner of the contested mark is presumed having filed it in good faith unless proved otherwise (T33/11 BIGBAB).
Three aggregated factors must be considered :
1. Identity or similarity between the signs likely to cause a confusion;
2. Understanding by the contested EUTM’s owner of the identical or confusingly similar prior sign;
3. Dishonest intention of the EUTM’s owner.
1. Regarding the likelihood of confusion, the cancellation division considers that the contested EUTM must be identical to the prior sign or at least confusingly similar, stating that this condition alone is however not enough to prove bad faith.
2. Regarding the understanding of the prior sign by the relevant public, the EUIPO considers that the sole websites and catalogs’ screenshots do not show a commercial exploitation of the term GEOGRAPHIC in association with the Norwegian flag .
However, as to the use of the term GEOGRAPHIC in association with the denomination NAPAPIJRI , the EUIPO considers that the sign is known by the public as being “NAPAPIJRI” in association with the Norwegian flag.
Moreover, the EUIPO considers that the plaintiff cannot assert rights to the Norwegian flag since it cannot be appropriated according to the article 6 of the Paris Convention.
The EUIPO concludes that there is no likelihood of confusion due to the differences between and the contested sign . Indeed, these signs differ by the presence of the verbal elements NAPAPIJRI and NORWAY, by their stylization and their respective figurative elements. In addition, the term GEOGRAPHIC is not the dominant element of the prior sign so that the sole similarity between the terms GEOGRAPHIC and GEOGRAPHICAL cannot create a likelihood of confusion.
3. Regarding the proof of dishonest intent, the EUIPO considers that none of the provided elements shows a dishonest intent from the contested EUTM’s owner when filing its trademark.
Therefore, the EUIPO dismissed the invalidity action.
Opinion of the LAVOIX experts
This decision is interesting as regards to the requirement of the demonstration of a likelihood of confusion between the signs to prove bad faith.
However, although the contested trademark is slightly similar to the earlier signs, there is a strong similarity if one considers the use of these two competitors in the course of business.
Nevertheless, the EUIPO underlines that the dismissal of a cancellation action based on bad faith does not prevent the plaintiff from filing another action against the contested mark on other basis.
Indeed, the cancellation division has limited the scope of its ruling to the comparison of the contested sign as filed without taken into account its use in the course of trade.
However we believe that the use of the signs in the trade could be considered as relevant facts in this case since “the evidence of the owner’s bad faith during the European Union trademark application’s file must be appreciated globally, taken account all relevant factors of the particular case” (11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 37)”.