[Editor's note] Like most countries and regions in the world, The rulings of the Court of Justice of the European Union have important guiding significance and predictive value for understanding the legal norms of the European Union. Esabaril (ELZABURU) At the beginning of each year, typical cases of the Court of Justice of the European Union in the previous year are summarized and published, And a brief review of each case, In order to help customers and partners to understand the EU intellectual property norms. Given the importance of Chinese customers and partners, We try to publish the Chinese version of typical cases on a weekly basis, It is convenient for Chinese partners to learn the latest information in a timely manner.

　　 [background]

　　2011 years 4 month 25 day, Joaquín Nadal Apply to the EU Intellectual Property Office for registration of the EU trademark (As shown in Figure 1) , Designated control 25, 35 and 39 Class of goods and services. Figure 1　　Turkish company Koton Magazacilik Tekstil Sanayi ve Ticaret AS (Hereinafter referred to as "KOTON" ) Objection to the above EU trademark application, It is considered that the application is a trademark of the previous country of Malta, And international trademarks in some EU member States designated valid trademarks (As shown in Figure 2, Designated control 18, 25 and 35 class) There is a risk of confusion and misidentification, Should be rejected. Figure 2　　The dissenting division ruled partly in favor KOTON Petition for objection: Dismissal of the contested trademark application at No 25 Class sum control 35 Classes on the goods and services item specified, But maintain control 39 Class service item. 2014 years 11 month 5 day, The contested mark is at No 39 Class service is approved for registration. The appeal board upheld the dissenting decision. 2014 years 12 month 5 day, KOTON File an invalid application for trademark registration with EU Intellectual Property Office, The reason is that the disputing trademark owner submitted the trademark application in bad faith, The disputed registered trademark shall be recognized (Designated control 39 Class service item) void.

　　The invalid department rejected the application for invalidation, The appeal Board subsequently upheld the finding of the invalid department, And give the following reasons: Despite the dispute between registered trademarks and KOTON The prior trademark is similar, And the previous trademark has a certain popularity, But whereas prior trademark designates goods and services items (The first 18, 25 and 35 class) Services for the registration of disputed trademarks (The first 39 class) It is neither the same nor similar, Therefore, There is no malicious registration.

　　2017 years 11 month 30 day, Eu general court (General Court) Dismissal of judgment KOTON appeal (Case number: T-687/16) . The general court held that, This is despite the fact that the two parties in dispute had a previous business relationship, And the owner of the disputed registered trademark is aware of the appellant's trademark, But whereas "The service item of the disputed trademark registration is completely different from that of the first cited trademark, There is therefore no risk of confusion or misidentification" , So this case doesn't fit "Eu trade mark regulation (The first 207/2009 No) " The first 52 (1) (b) article (current "Eu trade mark regulation (The first (EU) 2017/1001 No) " The first 59 (1) (b) article) A specified absolute void.

　　European Court of Justice (Court of Justice) accepted KOTON appeal, The final judgment was upheld on the grounds of appeal, And overturns an earlier decision by the EU Intellectual Property Office's appeal panel and the General Court.

　　 [conclusion]

　　The European Court of Justice stated that, Identified existence "malicious (bad faith) " The premise is that, The trademark applicant has acted in bad faith in filing his application (dishonest) Subjective intent. In addition, "Eu trade mark regulation (The first 207/2009 No) " The first 52 (1) (b) The purpose of the bar is to, The applicant is prohibited from registering a trademark in any way other than good faith, Willful or attempted prejudice to the interests of a third party; or, Although not to a third person in particular, The purpose of the applicant trying to obtain the exclusive right of the trademark is not to realize the function of the registered trademark (In particular, the core function of distinguishing the source of goods) .

　　The European Court of Justice stressed, "Applicant's subjective intent" Is the key to finding bad faith. The court also noted, Although it's a subjective intent factor, But all the facts of the case should still be considered (Including the risk of confusion and misidentification and more) On the basis of objective judgment. Although the European Court of Justice No C-529/07 Decision letter (2009 years 6 month 11 day) Point out, Factors such as risk of confusion should be considered in determining the applicant's bad faith, But you can't do that, in (European Union) The same or similar goods sold or offered in the internal market/Service item, The existence of an earlier mark identical or similar to the trademark to be applied for is sufficient to cause confusion and misidentification, Is the premise that the applicant has bad faith.

　　After the above analysis, European court of justice, "Applicant's subjective malice" , with "There is a risk of confusion and misidentification" ( "Eu trade mark regulation" The first 8 (1) (b) article) Different grounds of invalidity. Invalid application based on the former, Applicants are not required to have prior trademark rights in the same or similar goods and services, You don't have to prove either (Prior citation of trademarks and disputed registered trademarks) There is a risk of confusion and misidentification. Therefore, Court decision, "Even if there is no risk of confusion and misidentification between the trademark used by a third party and the disputed trademark, Or the third party does not use the same or similar trademark as the disputed trademark, Relevant and consistent evidence can be formed based on other facts of a specific case, The applicant can be found to have acted in bad faith" .

　The European Court of Justice went on to clarify, The point of time to judge the applicant's subjective intention is the date of filing the trademark application. One fact of particular concern at the trial of this case, When the trademark in question was originally filed, Specify categories of goods and services except No 39 Out of class, Also include KOTON Prior trademark (Contains similar text and graphic elements) The actual use of the first 25 Class sum control 35 Textile field.

　　In summary, European court of justice, Although the disputed trademark was ultimately registered in the No 39 Class services do not constitute similar goods and services for which the trademark is previously cited, And the facts ascertained by the General Court in its judgment——The business logic behind submitting the registration application and the sequence of events leading to the submission of the application——correct, But the general court failed to fully examine these facts, And the premise of finding the existence of bad faith is the existence of the same or similar mark on the same or similar goods and services registered with the disputed trademark——yes "Eu trade mark regulation" The first 52 (1) An overly strict interpretation of the article. finally, The European Court ruled in favour of the appeal.

　　 [comment]

　　2009 years 6 month 11 day, European court of justice C-529/07 The ruling clearly states, Determine whether the applicant submitted the application in bad faith, One of the factors to consider, "Before filing an application for dispute, The applicant knew or should have known that the third party was already in at least one member State market, Use for a long time on the same or similar goods a mark identical or similar to the trademark applied for registration, And sufficient to constitute confusion and misidentification" .

　　Extrapolate from the above statement, It seems that the factual factors for finding bad faith are the same as the relatively invalid grounds for finding a risk of confusion and misidentification between trademarks. however, The decision removes all uncertainty on this issue, specify, Confounding similarity is not a necessary factor in finding malice. It should also be noted, After this case, 2019 years 11 month 13 day, European court of justice C-528/18 P adjudication (OUTSOURCE 2 INDIA case, For details, please refer to our commentary on the case " [Eu trademark] One party with quasi-contractual relationship illegally registered the other party's trademark (C-528/18 P) " ) Again affirms this conclusion.

　　although "malicious" The concept is inherently uncertain, And the applicant's intention is subjective, However, it is still necessary to analyze the specific situation of the applicant in the process of applying for trademarks, Objectively determine whether there is malicious intent. In addition, When making an assessment, It should not be assumed that conflicting marks are confusingly similar or used on the same or similar goods or services. otherwise, The European Court should have rejected it in the first place KOTON appeal, Because both the EU Intellectual Property Office and the General Court have made it clear, The services covered by the registered trademark in dispute (The first 39 Class transportation services, etc) Item of goods with the prior cited trademark (The first 25 Clothing etc) It is neither the same nor similar.

　　The European Court of Justice has taken a completely different line of scrutiny. Although in my opinion, Whether the conflicting trademark and the goods or services covered by it are confusingly similar to the prior trademark, It is a factor to be considered in determining the presence of bad faith, But that's just one factor, Not the only one. The fundamental and decisive factor in determining the presence of bad faith is, When the applicant submitted the application "Subjective intent" . As can be inferred from the verdict in this case, After a comprehensive analysis, The purpose of the applicant's application for a contested trademark is to cover what the applicant should know, Goods and services related to the trade field in which the prior trademark is used, So bad faith should be assumed. Based on business logic, The No 39 class (Transport service, Undefined territory) Other classes should be registered with them (Immediate regulation 25 Class of clothing, etc) Domain related.

　　Finally, 2019 The general Court passed many decisions in 2000, A more detailed definition is provided of the factors to be considered in determining the applicant's bad faith, include: T-795/17 (2019 years 5 month 14 day) , T-3/18 and T-4/18 (2019 years 5 month 23 day) , T-772/17 (2019 years 7 month 12 day) , T-773/17 (2019 years 7 month 12 day) , and T-774/17 (2019 years 7 month 12 day) Etc.

　　 [reference]

　　 " [Eu trademark] One party with quasi-contractual relationship illegally registered the other party's trademark (C-528/18 P) "

　　compile: Liu Dan, Esabarry Legal Counsel　　source: Esabaril (ELZABURU) Intellectual property rights