EU General Court sides with Ireland in TM clash
The EU General Court has refused to overturn a European Union Intellectual Property Office (EUIPO) finding that a trademark was applied for in bad faith, in a victory for Ireland and an Irish cooperative.
The General Court—in a decision handed down yesterday, June 29—rejected Spanish company Hijos de Moisés Rodríguez González’s attempt to annul the EUIPO’s Grand Board of Appeal’s finding that the contested trademark was used in a deceptive manner.
Back in August 2013, Hijos de Moisés had applied to register the figurative mark ‘La Irelandesa’ for the following goods in class 29: “meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats.”
In January 2015, Ireland and Ornua Co-operative (Ireland's largest exporter of Irish dairy products) filed an application for a declaration that the contested mark was invalid.
The EUIPO’s Cancellation rejected the application for a declaration of invalidity in its entirety in 2016 but, following an appeal against the decision, the Presidium of the Boards of Appeal referred the case to the Grand Board of Appeal.
The Grand Board of Appeal concluded that, at the time when the application for registration was filed, the contested mark was used in a deceptive manner and that the registration of the trademark had been applied for in bad faith.
Consequently, it annulled the Cancellation Division’s decision and declared the contested mark invalid.
Hijos de Moisés appealed against the decision, asking the General Court to annul the contested decision. In its first plea, it criticised the Grand Board of Appeal for applying the conditions applicable to grounds for revocation to the invalidity proceedings and that the board should have taken into account the acquired distinctive character of the trademark.
While the General Court rejected the latter part of the plea, it did find that the appeal board had erred in applying the rules on revocation proceedings to invalidity proceedings.
Hijos de Moisés also argued that the appeal board incorrectly regarded certain characteristics of the trademark as evidence that the applicant acted in bad faith.
In rejecting the plea, the General Court cited a list of factors set out by the appeal board in its finding of bad faith, including the finding that the 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.
Additionally, it noted that Hijos de Moisés had been cooperative’s exclusive agency and purchased Irish butter from it, packaged it and sold it in the Canary Islands. This relationship had terminated in 2011, but Hijos de Moisés had allegedly continued to sell the goods under marks containing the words ‘la’ and ‘irlandesa’, although they were no longer of Irish origin.
“It may be inferred from the foregoing considerations that registration of the contested mark was contrary to honest commercial and business practices. The Grand Board of Appeal was therefore correct in finding that the applicant acted in bad faith when it applied for registration of the contested mark,” said the court.
Although the court found that the first please was well founded, it added this had “no bearing on the legality of the contested decision” as the plea against the second pillar of bad faith was not well founded and the second pillar was enough to justify the appeal board’s decision.
The appeal was dismissed and Hijos de Moisés was ordered to pay costs.
