In the judgement of 29 June 2022, the General Court rejected the application against the decision of the Grand Board of Appeal of the European Union Intellectual Property Office (“EUIPO”) that declared the trademark “La Irlandesa” invalid. While the findings on the deceptive character were not upheld, the General Court agreed with the findings on bad faith trademark registration. It considered inter alia that while the contested trademark was not deceptive on the filing date, the fact that the applicant sold goods under the contested trademark even though a not insignificant part of those goods was not of Irish origin is relevant for assessing the bad faith of the applicant.
Background
On 6 August 2013, Hijos de Moisés Rodríguez González, SA (the “Applicant”) filed an application for registration of an EU trademark for the following figurative sign:
The trademark was registered on 3 January 2014. Ireland and the Intervener, Ornua Co-operative (previously Irish Dairy Board Co-operative Ltd), filed an application for a declaration that the contested trademark was invalid in respect of all the goods, claiming that the trademark was deceptive, and that the registration had been applied for in bad faith.
The Cancellation Division rejected the application for a declaration of invalidity in its entirety. With respect to the claim of bad faith it took into account that there was a commercial agreement in force from 1967 to 2011 between the Applicant and the Intervener and that the Applicant filed for the trademark registration after the end of such agreement, finding no bad faith under such circumstances.
The Decision of the Board of Appeal
In appeal, the Grand Board of Appeal of EUIPO annulled the Cancellation Division’s decision and declared the contested trademark invalid, finding that, at the time when the application for registration was filed, the contested trademark was used in a deceptive manner and that the registration of that trademark had been applied for in bad faith.
First, to assess both whether the contested trademark was deceptive and if it was filed in bad faith, the Grand Board of Appeal analysed the inherent characteristics of the trademark. It concluded that, considering the dominant word element “la irlandesa” and its meaning for the relevant public, borne out by the colour green which surrounds it (being a well-known fact that the colour green was used to represent Ireland), when the contested trademark was affixed, without further indication, to the goods covered by that trademark, Spanish-speaking consumers would at first sight and without any further thought establish a direct connection between the meaning of that word element and a characteristic of those goods, namely their geographical origin, and that, when seeing the trademark affixed to those goods, those Spanish-speaking consumers would therefore believe that those goods originated in Ireland. The General Court agreed [para 36].
Second, with respect to the plea of invalidity for deceitful character, the Grand Board of Appeal considered that already at time of its filing the contested trademark was misleading for the relevant public as to the geographical origin of the goods at issue. It relied inter alia on evidence subsequent to the application, including the Applicant’s online catalogue of 2014 and photographs of foodstuffs bearing the contested trademark, manufactured in 2016 and purchased in Spain the same year, which showed that the goods were manufactured in countries other than Ireland. Moreover, the contested trademark was not limited only to goods originating from Ireland.
The General Court disagreed on this point as (even if the relevant public would perceive the contested trademark as indicating that the goods covered by that trademark were of Irish origin) there was no inconsistency, on the date of filing of the contested trademark, between the information which the contested trademark conveyed and the characteristics of the goods designated in the application. It noted in this respect that the list of goods covered by the contested trademark did not contain any indication of their geographical origin and that it could therefore cover goods originating from Ireland. Subsequent evidence was not relevant, as it could not confirm such a misleading nature [paras 43-77].
Third, as regards the bad-faith registration plea, the Grand Board of Appeal has held that the Applicant acted in bad faith when it applied for the registration of the contested trademark, for the following reasons:
- the contested trademark misleads the Spanish-speaking consumer by establishing a clear geographical link to Ireland when the goods at issue do not originate in that country;
- the Applicant was aware of unfavourable decisions long before the application date by EUIPO and by Spanish judicial and administrative authorities refusing other applications for trademarks containing the element “la irlandesa” and such awareness was confirmed by the fact that the applicant subsequently obtained Spanish registrations of similar trademarks by including expressly in the description of the goods a geographical limitation relating to Ireland, which it did not do with regard to the contested trademark;
- initially the Applicant was the Intervener’s exclusive agency and purchased Irish butter in bulk from it, packaged it and sold it in the Canary islands, and in this capacity has filed for a Spanish trademark La Irlandesa, which was intended to promote the sale of butter of Irish origin in Spain in the context of the said contractual relationship; nevertheless, even if the business relationship came to an end in 2011, the Applicant continued to sell the goods under the trademarks containing the words “la” and “irlandesa” although they were no longer of Irish origin, and the Board of Appeal found that the applicant “has not demonstrated any legitimate commercial logic to explain the filing of the contested mark; nor has it demonstrated the economic logic of its use following the end of the business relationship with the intervener in 2011. The applicant therefore sought only to obtain an unfair advantage from a business relationship which has been terminated, in order to continue to benefit from the image of Irish goods” [para. 91];
- having in mind the above, the Board of Appeal considered that the Applicant, when filing the contested trademark, intended to continue to mislead the public as to the geographical origin of the goods concerned and to take advantage of the good image of Irish goods. The applicant therefore had a dishonest intention, having deliberately filed the contested trademark in order to create an association with Ireland.
Comment
The General Court has upheld the decision of the Grand Board of Appeal on the bad faith plea, considering that the registration of the contested trademark was contrary to honest commercial and business practices, as, essentially, the Applicant has sought to transfer the advantage derived from the association with Ireland to goods not having that geographical origin, in particular after the end of its business relationship with the Intervener which supplied it with Irish butter.
The decision of the General Court is consistent with earlier ruling on bad faith trademark registration, as discussed in more detail in other posts. The General Court confirmed that the concept of bad faith must be the subject of an overall assessment, taking into account all the factual circumstances relevant to the particular case and cannot be confined to a limited category of specific circumstances. The relevant time for determining whether there was bad faith is the time of filing the application for registration.
Bad faith can be found in a multitude of situations. Recent examples include re-filing of an identical trademark for identical goods or services, that amounts to bad faith where the applicant seeks to artificially extend the grace period for proof of genuine use (Monopoly), or seeking protection of a trademark solely because the applicant could not rely on copyright rights without losing anonymity (Banksy). Also, bad faith could be found if the application was made without any intention to use the trademark in relation to the goods and services covered by the registration (ECJ in Sky, para 81).
The decision in La Irlandesa stands out for being at the intersection of bad faith trademark registration and the registration of misleading trademarks. There are at least two important takeaways from this decision:
First, while aspects subsequent to the application concerning the selling of goods that were not of Irish origin were not, in the circumstances of the case relevant for assessing the misleading character at the filing date (in invalidity proceedings), the same aspects were relevant for assessing the intention at the registration time, hence for the bad faith plea.
Second, the General Court emphasised that while bad faith registration is assessed at the filing date, the evidence that could be relied upon to sustain the bad faith might be “evidence subsequent to the date on which the contested mark was filed, since that evidence constituted evidence relating to the situation on the relevant date, and even on the use of the contested mark subsequent to that filing”. More specifically, the way the contested trademark was used reflected the bad faith registration, as the applicant has sought to take advantage of the association in the mind of the relevant public between the trademark and goods originating from Ireland. On the other hand, invalidity for misleading character is assessed according to evidence at the date of filing, the subsequent use being irrelevant. Subsequent evidence can serve only to clarify the circumstances as they were on that date. [paras 66-68]
