EUIPO decision overturned in bad faith TM case at EU court
The European Intellectual Property Office (EUIPO) suffered a loss on Wednesday, 28 October, at the EU General Court, which ruled that it had erred in upholding a trademark registered by a German venture capital fund.
In 2015, Target Partners registered a EU trademark with EUIPO for the word sign ‘TARGET VENTURES’ to cover services including business management, consultancy, administration and advertising.
In July 2015, Target Partners received an email sent by a client who had confused it with another venture capital fund, Target Ventures, based in the British Virgin Islands. Target Partners responded by sending its competitor a cease and desist letter, after which Target Ventures filed an application for a declaration of invalidity at the EUIPO against the disputed mark.
Target Ventures argued that it has been operating under the sign ‘TARGET VENTURES’ in the Russian venture capital market since 2012 and in the EU market since 2013, and that Target Partners had acted in bad faith by attempting to register the mark.
However, Target Partners countered that it was justified in seeking the registration as it had owned the domain name ‘targetventures.com’ since 2002, and another domain name ‘targetventures.de’ since 2009.
On 25 May 2017, the EUIPO’s cancellation division rejected the application for a declaration of invalidity in its entirety. Target Ventures appealed against the decision, and that appeal was dismissed by the EUIPO’s Second Board of Appeal, after it concluded that the applicant had not proved that the Target Partners was acting in bad faith when it filed the application for the registration of the contested mark.
The board also upheld the cancellation division’s findings that Target Ventures had failed to prove that Target Partners knew of the services offered in the EU by the company operating under the sign ‘Target Ventures’.
It also found that Target Ventures had not shown that its use of the sign in Europe was so extensive that it could assume that the sign had become well known or recognised among the public and competitors in 2015.
On appeal at the General Court, Target Ventures argued that the board made errors in the assessment of whether Target Partners had prior knowledge of its rival’s long-term use of the sign ‘TARGET VENTURES’ in connection with its venture capital services.
It also put forward that Target Partners had never used or intended to use that sign to designate the commercial origin of its services, and that it “cannot substantiate the claim of a legitimate interest in filing the contested mark 13 years later”, on the basis of a domain name which had never been used.
The general court agreed with Target Ventures, holding that the board interpreted the concept of bad faith too restrictively.
It also stated that it was clear that Target Partners’ intention at the time of filing was that of strengthening its mark,‘TARGET PARTNERS’, since the websites ‘www.targetventures.de’ and ‘www.targetventures.com’ did nothing other than provide a means of redirection to its main website.
Consequently, it ruled that Target Partners made the application “not with the aim of engaging fairly in competition”, but with the intention of obtaining…., an exclusive right for purposes other than those falling within the functions of a trademark...”
It proceeded to rule that the board erred in envisaging that the intention of expanding the use of the sign ‘TARGET VENTURES’ could have been the reason for the filing of the application for registration of that sign.
The general court annulled the board’s decision, and ordered EUIPO to pay Target Ventures’ costs.
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