In Univers Agro EOOD v European Union Intellectual Property Office (EUIPO) (T‑592/20), the General Court (Ninth Chamber) has dismissed the action brought by Univers Agro against the decision of the Fourth Board of Appeal of the EUIPO (Case R 725/2019-4) in invalidity proceedings between Shandong Hengfeng Rubber & Plastic and Univers Agro.
On 7 March 2017 Univers Agro (‘the applicant’) sought registration of an EU trademark for the word mark AGATE for automobile tyres in Class 12. The mark was registered on 21 June 2017.
On 28 September 2017 Shandong Hengfeng Rubber & Plastic Co Ltd (‘the intervener’) filed an application for a declaration of invalidity claiming, on the basis of Article 59(1)(b) of Regulation 2017/1001, that the applicant had acted in bad faith when filing the application for the contested mark. This claim was based on the intervener’s prior Chinese figurative mark AGATE, depicted below:
In support of its application, the intervener claimed that it had been using the Chinese mark AGATE in the course of trade in Bulgaria for tyres in Class 12.
On 21 February 2019 the Cancellation Division of the EUIPO granted the intervener’s application and declared the applicant’s mark invalid. According to the Cancellation Division, Univers Agro had filed the application in bad faith because it was evident that the mark had been filed with the aim of taking advantage of the lack of formal protection for the intervener’s mark in Bulgaria, by coupling its clients and the market share created by the intervener’s commercial partner and distributor, Omnifak Ltd.
Univers Agro appealed the decision, claiming that it had no knowledge of the fact that the Chinese mark AGATE was also registered for tyres in Class 12, or of the existence of the intervener and Omnifak before the date of publication of its application for registration.
On 27 July 2020 the Fourth Board of Appeal of the EUIPO upheld the decision of the Cancellation Division. The Board of Appeal argued that the marks were identical and that the goods covered were at least highly similar. According to the board, it was practically impossible that the applicant had no knowledge that the intervener was using the Chinese mark through its distributor Omnifak in Bulgaria. This was due, among other things, to the fact that Omnifak had imported from China and sold in Bulgaria, for a relatively short period of time, 23 000 Agate tyres - a quantity that cannot be considered insignificant. Further, this finding was not disputed by the applicant and it had not provided proof to the contrary. The Board of Appeal also argued that it was impossible that the applicant intended to “honestly use the contested mark in the course of trade, and not to block the Bulgarian market for the intervener and its distributor and take over their market share”.
The applicant alleged errors of assessment by the Board of Appeal relating to:
-its knowledge of the existence of the Chinese mark AGATE; and
-its intentions at the time of filing the application for registration of the contested mark.
Concerning the first complaint, the court argued that the board was right to presume that, at the time of filing the application for registration, the applicant had knowledge of the activities of its direct competitor in Bulgaria and, in particular, of the marketing of tyres made in China under a mark which was highly similar to the contested mark.
Further, the court stated that the board did not err in finding that the applicant’s actions were directed at the intervener and its distributor very quickly after the registration of the contested mark, which shows that it was well prepared to target the intervener and its distributor and that it already knew about the use of the Chinese mark. On these grounds, the first complaint was rejected.
Regarding the second complaint, the court first found that the board was right in concluding that there was no commercial logic underlying the application for registration of the applicant’s mark. Thus, the board did not make an error in assessing the applicant’s right to defend its mark. Secondly, the court stated that the applicant’s arguments concerning the probative value of the affidavits produced by the intervener were not sufficient to call them into question. Thirdly, the court confirmed that the board’s assessment was not made solely on the basis that the applicant was not able to explain the origin of the contested mark, contrary to what the applicant claimed. Fourthly, the court stated that one piece of evidence was not able to call all of the findings of the Board of Appeal into question, as claimed by the applicant. Finally, the board was not required to examine in detail “the intervener’s commercial strategy and specific intentions”. On these grounds, the second complaint was also rejected.
This article first appeared on WTR Daily, part of World Trademark Review, in (April/2021). For further information, please go to www.worldtrademarkreview.com