Contents
Judgment of the General Court (Sixth Chamber)28 January 2016note(Community trade mark — Invalidity proceedings — Community figurative mark DoggiS — Earlier national figurative marks DoggiS — Earlier national word marks DOGGIS and DOGGIBOX — Earlier national figurative marks representing a character in the shape of a hot dog — Additional evidence adduced for the first time before the Board of Appeal — Article 76 of Regulation (EC) No 207/2009 — Bad faith — Article 52(1)(b) of Regulation No 207/2009 — Evidence adduced for the first time before the General Court)In Case T‑335/14,José-Manuel Davó Lledó, residing in Cartagena (Spain), represented by J.-V. Gil Martí, lawyer,vOffice for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by S. Palmero Cabezas, acting as Agent,the other party to the proceedings before the Board of Appeal of OHIM beingAdministradora y Franquicias América, SA, established in Santiago (Chile),andInversiones Ged Ltda, established in Santiago,THE GENERAL COURT (Sixth Chamber),composed of S. Frimodt Nielsen, President, F. Dehousse and A.M. Collins (Rapporteur), Judges,Registrar: E. Coulon,having regard to the application lodged at the Registry of the General Court on 13 May 2014,having regard to the response lodged at the Court Registry on 15 October 2014,having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur and pursuant to Article 135a of the Rules of Procedure of the General Court of 2 May 1991, applicable in the present case pursuant to Article 227(7) of the Rules of Procedure of the General Court, to rule on the action without an oral procedure,gives the following
Judgment
Background to the dispute
1On 18 February 2010, the applicant, Mr José-Manuel Davó Lledó, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2The mark in respect of which registration was sought is the figurative sign reproduced below with the indication of the colour red:
3The goods and services for which registration was sought fall within Classes 29, 30 and 43 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, in relation to each of those classes, to the following description:— Class 29: ‘Hamburgers; sausages; cold meats; processed fruit and vegetables; fruit salads; vegetable salads; vegetable salads; potato fries; processed potatoes; cream; milk; potato products; 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’;— Class 30: ‘Pizzas; sandwiches; sandwiches; bakery products; edible ices; sauces for food; pastry products; desserts; salad dressings; chocolate; coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking — powder; salt, mustard; vinegar, sauces (condiments); spices; ice’;— Class 43: ‘Restaurant services; cafeteria services; fast-food restaurant services; restaurant services and food takeaway services; restaurants, cafés, brasseries, pubs, bars, food catering and hotels; restaurant and catering services; preparation and cooking of food; catering services; snack-bars; restaurant services (food); temporary accommodation’.
4The application for the trade mark was published in Community Trade Marks Bulletin No 65/2010 of 12 April 2010.
5The contested trade mark was registered on 14 December 2010 under number 8894826 in respect of all the goods and services referred to in paragraph 3 above.
6On 6 June 2012, Administradora y Franquicias América, SA and Inversiones Ged Ltda (‘the parties requesting the declaration of invalidity’) instituted proceedings seeking to have the contested mark declared invalid under Article 52(1)(b) of Regulation No 207/2009 in respect of all the goods and services for which it had been registered.
7The principal activities of the parties requesting the declaration of invalidity are: the operation of bars, restaurants, cafeterias and fast-food establishments, as well as the licensing, management and operation of franchises in that sector.
8Inversiones Ged relied on the following earlier marks, of which it is the proprietor, in support of the application for a declaration of invalidity:— the Chilean figurative mark reproduced below, with red letters and yellow background, registered on 12 January 2004 under number 683048 covering ‘cafés selling ices and soft drinks, bars, restaurants’ in Class 43:
9Administradora y Franquicias América relied on the following earlier trade marks, of which it is the proprietor, in support of the same application:— the Chilean word mark COFFEE BREAK DOGGIS, registered on 13 December 2004 under number 711375 covering the same services in Class 43 as those protected by Chilean trade mark number 728038;— the Chilean figurative mark reproduced below, registered on 12 July 2006 under number 762423 covering ’services of restaurants, bars, cafés selling ices and soft drinks, coffee shops, tea rooms’ in Class 42:— the Uruguayan figurative mark reproduced below, registered on 14 May 2008 under number 387908 covering services in Class 43:
10The parties requesting the declaration of invalidity stated that, in August 2011, when Inversiones Ged sought to register the mark doggis in Spain, it learned of the existence of the following marks, registered in the applicant’s name: the contested mark, the Spanish mark doggis, registered on 2 June 2010 under number 2914857, covering goods and services in Classes 29, 30, 39 and 43, and the international mark doggis, registered on 16 March 2010 under number 1037118, covering services in Class 43. They added that they also learned that the applicant was proprietor of the domain names ‘doggis.es’ and ‘doggis.com.es’.
11The parties requesting the declaration of invalidity stated that the applicant acted in bad faith in applying for contested trade mark, that they were not informed beforehand and that they did not give their consent. They observed that the word in the mark was identical to all their earlier marks and visually identical to some of them, that the services covered by the mark were identical to those protected by a number of their earlier marks and that the goods covered by it were complementary to the services protected by most of their earlier marks. They also argued that the applicant was aware of the existence of their earlier marks and their activities, as described in paragraph 7 above, when he had filed his application to register the contested mark.
12By decision of 18 July 2013, the Cancellation Division of OHIM rejected the application for a declaration of invalidity in its entirety.
13On 18 September 2013, the parties requesting the declaration of invalidity appealed against the Cancellation Division’s decision.
14By decision of 13 March 2014 (‘the contested decision’), the First Board of Appeal of OHIM upheld the action brought by the parties requesting the declaration of invalidity, set aside the Cancellation Division’s decision in its entirety and declared the registration of the contested mark invalid. It also ordered the applicant to pay the costs of the invalidity and the appeal proceedings.
15First, the Board of Appeal accepted, in essence, with reference to Article 76(2) of Regulation No 207/2009, certain supplementary evidence adduced for the first time before it by the parties requesting the declaration of invalidity, in this case an extract from the website www.consultafranquicias.com and an extract from the webpage es.negocius.com/franquicia-doggis_fv1793.html (paragraphs 20 and 21 of the contested decision).
16Secondly, the Board of Appeal considered that, at the time the application for registration of the contested mark was filed on 18 February 2010, there were relevant factors specific to this case indicative of recognition on the applicant’s part of the pre-existence of the Chilean figurative marks DoggiS protected by registrations No 683048, No 857568 and No 801904 (paragraph 32 of the contested decision). In support of that finding, the Board of Appeal referred to extracts from the applicant’s website and to extracts from advertising published by the applicant on internet sites devoted to franchises (paragraphs 33 to 37 of the contested decision).
17Thirdly, the Board of Appeal, taking account of the nature of the contested mark, observed that it was identical to the earlier Chilean figurative marks DoggiS and referred to the same services and goods necessary for supplying the restaurant services in question. It considered that that similarity could not be ‘the result of a coincidence’ (paragraphs 37 to 41 of the contested decision).
18Fourthly, the Board of Appeal observed that, at the time the application for registration of the contested mark was filed, the mark doggis belonging to the parties requesting the declaration of invalidity had been in use for a number of years, with increasing success in Chile in recent years, which had bolstered its reputation among the relevant public (paragraph 42 of the contested decision).
19Fifthly, the Board of Appeal considered that the fact that the parties requesting the declaration of invalidity had shown no interest in protecting their earlier marks in the European Union before the date on which the application for registration of the contested mark was filed, despite their use of the earlier marks in Chile, did not prove that the applicant had not acted in bad faith at the time the application was filed, as that matter was ’subjective to the applicants [for a declaration of invalidity]’ (paragraph 43 of the contested decision).
20Sixthly, the Board of Appeal found that the fact of applying for a figurative mark identical to the earlier figurative marks belonging to the parties requesting the declaration of invalidity covering services identical to those covered by the earlier marks and goods necessary for the supply of those services was not only illogical from a business perspective, but also tended to confirm the intention of taking undue advantage of the rights attached to those earlier marks (paragraph 45 of the contested decision).
— the Chilean figurative mark reproduced below, with red letters and yellow background, registered on 15 September 2008 under number 857568 covering ‘services of restaurants, bars, cafés selling ices and soft drinks, coffee shops, tea rooms, providing fast-food facilities’ in Class 43:— the Chilean figurative mark reproduced below, with red letters and yellow background, registered on 26 November 2007 under number 801904 covering goods in Classes 16, 25, 28 and 32:— the Chilean figurative mark reproduced below, registered on 21 June 2005 under number 728038 covering ’services provided by establishments with the essential aim of offering foodstuffs or beverages ready for consumption, including restaurants, self-service restaurants, coffee shops and tea rooms, cafés selling ices and soft drinks, budget restaurants, and bars, procuring of prepared foodstuffs for home delivery’ in Class 43:— the Chilean figurative mark reproduced below, registered on 5 May 2005 under number 724717 covering goods in Classes 16, 25, 28 and 32:— the Chilean word mark DOGGIS, registered on 6 December 2009 under number 867740 covering ‘cafés selling ices and soft drinks, bars, restaurants’ in Class 43;— the Peruvian word mark DOGGIS, registered on 12 June 2009 under number 352647 covering goods in Class 43;— the Chilean word mark DOGGIBOX, registered on 1 September 2004 under number 702110 covering goods in Class 32;— the Chilean figurative mark reproduced below, registered on 5 May 2005 under number 724718 to cover the same services in Class 43 as those protected by Chilean trade mark number 728038:— the Chilean figurative mark reproduced below, registered on 5 May 2005 under number 724716 covering goods in Classes 16, 25, 28 and 32:— the Brazilian figurative mark reproduced below, registered on 22 June 1999 under number 819295671 covering ‘food goods/services’ in Classes 38 and 60:
Forms of order sought
21The applicant claims that the Court should:— annul the contested decision and confirm the decision of the Cancellation Division;— order OHIM and the parties requesting the declaration of invalidity to pay the costs.
22OHIM contends that the Court should:— dismiss the action;— order the applicant to pay the costs.
Law
23In support of his action, the applicant relies on two pleas in law: (i) infringement of Article 76 of Regulation No 207/2009 and (ii) infringement of Article 52(1)(b) thereof.
The first plea: infringement of Article 76 of Regulation No 207/2009
24The applicant submits that the Board of Appeal infringed Article 76 of Regulation No 207/2009 in taking account of evidence adduced for the first time before it by the parties requesting the declaration of invalidity, in the form of extracts from the website and web page referred to in paragraph 15 above, in support of a new plea, which is itself based on new facts.
25The new facts in question are the following:— the fact, inferred from the website www.consultafranquicias.com, that the applicant had acted ‘following the success achieved by hot dogs on the American continent’ and ‘with a view to conquering the European market’ (paragraph 35 of the contested decision);— the fact that the extract from the web page es.negocius.com/franquicia-doggis_fv1793.html ‘demonstrates recognition on the part of [the applicant] that [the Latin American marks] Doggis existed previously’ and that the applicant advertised that fact by stating that ‘Doggis is the hot dog franchise with a prestigious international reputation’ and that ‘[its] chain has just been launched in Spain, and aims to become the [leading] hot dog chain in Europe’ (paragraph 36 of the contested decision);— the fact that the character in the shape of a hot dog, reproduced below, which appears on the extract from the web page es.negocius.com/franquicia-doggis_fv1793.html, bears similarities to the earlier Chilean trade marks No 728038 and No 724717 (paragraph 37 of the contested decision):
26OHIM replies, in essence, that Article 76(2) of Regulation No 207/2009 allows it to take account of facts and evidence relied on or adduced out of time and confers on it a broad margin of discretion in that regard.
27Under Article 76 of Regulation No 207/2009:1. In proceedings before it [OHIM] shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.2. [OHIM] may disregard facts or evidence which are not submitted in due time by the parties concerned.’
28According to settled case-law, it follows from the wording of Article 76(2) of Regulation No 207/2009 that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time limits to which such submission is subject under the provisions of that regulation and that OHIM is in no way prohibited from taking account of facts and evidence which are submitted or produced out of time, that is to say, after the time limit set by the Cancellation Division and, as the case may be, for the first time before the Board of Appeal (see, to that effect, judgments of 13 March 2007 in OHIM v Kaul, C‑29/05 P, ECR, EU:C:2007:162, paragraph 42, and 18 July 2013 New Yorker SHK Jeans v OHIM, C‑621/11 P, ECR, EU:C:2013:484, paragraph 22).
29In stating that OHIM ‘may’ decide to disregard facts and evidence submitted or produced out of time, Article 76(2) of Regulation No 207/2009 grants OHIM a broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take such information into account (judgments in OHIM v Kaul, cited in paragraph 28 above, EU:C:2007:162, paragraphs 43 and 68, and New Yorker SHK Jeans v OHIM, cited in paragraph 28 above, EU:C:2013:484, paragraph 23).
30Moreover, as regards the exercise of that discretion by OHIM for the purposes of the possible taking into account of evidence submitted out of time, it should be noted that the Court has already held that where OHIM is called upon to give judgment in the context of opposition proceedings, taking such facts or evidence into account is particularly likely to be justified where OHIM considers, first, that the material produced late is, on the face of it, likely to be relevant to the outcome of the opposition brought before it and, second, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not preclude such matters being taken into account (see, by analogy, judgments in OHIM v Kaul, cited in paragraph 28 above, EU:C:2007:162, paragraph 44, and New Yorker SHK Jeans v OHIM, cited in paragraph 28 above, EU:C:2013:484, paragraph 33).
31In the present case, first of all it must be observed that it is apparent from the reasons of the contested decision that the Board of Appeal in fact exercised the broad discretion conferred on it by Article 76(2) of Regulation No 207/2009 in order to find, whilst stating reasons in support thereof and taking due account of all the relevant circumstances, that it was appropriate to take account of two pieces of additional evidence adduced for the first time before it in order to deliver the decision it was called upon to take.
32Thus, having identified, in paragraph 20 of the contested decision, the evidence in question, namely the extract from the website www.consultafranquicias.com and an extract from the web page es.negocius.com/franquicia-doggis_fv1793.html, the Board of Appeal stated the following in paragraph 21 of that decision:‘Said documentation provided to the Board by the applicants [in the invalidity proceedings] consists of documents which are merely confirmatory in nature and which supplement the information on the website [www.doggis.es] already submitted in support of the argument that [the applicant] was aware of the … trade marks and activities in the fast-food sector [of the parties requesting the declaration of invalidity]. They should therefore be taken into account pursuant to Article 76(2) [of Regulation No 207/2009].’
33Next, the Board of Appeal made correct use of the discretion conferred on it by Article 76(2) of Regulation No 207/2009 by accepting to take into account the two pieces of evidence in question.
34In that regard it must be observed first, as the Board of Appeal and OHIM rightly pointed out, that the two disputed extracts merely corroborated and supplemented the evidence already produced initially before the Cancellation Division by the parties requesting the declaration of invalidity, namely extracts from the applicant’s website www.doggis.es.
35Secondly, it is clear that the allegedly new facts referred to by the applicant (see paragraph 25 above) were already present under the heading ‘Empresa’ [Business] on his own website www.doggis.es, an extract of which had been submitted by the parties requesting the declaration of invalidity before the Cancellation Division. That latter extract conveys the same ideas as those set out in the two disputed extracts, stating inter alia the following:— ‘Doggis was brought to Spain by [the applicant] in 2010 with the objective of beginning his global expansion through a system of franchises’;— ‘The hot dog … is a product that has been highly successful in numerous countries throughout the world, including the US, Chile, Brazil, Colombia, Germany, etc.’;— ‘We are the first hot dog franchise in Spain and we offer our franchise holders the opportunity to work under our wing, based on our experience, our knowledge of the sector and continuous assistance to our franchise holders, which will be accessible to franchise holders who choose to work with us in order to put in place their own hot dog franchise’.
36In addition, the character in the shape of a hot dog shown on the extract from the web page es.negocius.com/franquicia-doggis_fv1793.html was already present on some of the extracts from the website www.doggis.es produced by the parties requesting the declaration of invalidity before the Cancellation Division.
37Thirdly, it must be observed that, contrary to the applicant’s assertions, the parties requesting the declaration of invalidity before the Board of Appeal did not rely on the two disputed extracts and the appurtenant facts in support of any new plea. In fact, as the Board of Appeal and OHIM rightly observed, those extracts were intended merely to corroborate one of the main arguments put forward by the parties requesting the declaration of invalidity and that they had defended before the Cancellation Division, to the effect that the applicant had been aware of the existence of their marks and their business activities when he applied for registration of the contested trade mark (see paragraph 4 in fine of the Cancellation Division’s decision of 18 July 2013).
38Fourthly, in keeping with what is set out in paragraph 37 above, the late production by the parties requesting the declaration of invalidity of the two disputed extracts was intended to address the Cancellation Division’s finding that they had not furnished sufficient proof that the applicant had prior knowledge of the existence of their earlier marks (see paragraphs 16 and 17 of the Cancellation Division’s decision of 18 July 2013).
39It follows from all the foregoing considerations that the evidence adduced for the first time before the Board of Appeal by the parties requesting the declaration of invalidity was actually relevant for the outcome of the dispute. Moreover, they adduced that additional evidence when they lodged their pleadings setting out the grounds for their action, thus enabling the Board of Appeal to exercise its discretion objectively and with stated reasons as to whether to take that evidence into account. Lastly, given the findings in paragraph 38 above, the parties requesting the declaration of invalidity cannot be considered to have been manifestly negligent with regard to the applicable time limits.
40Consequently, the first plea in law must be rejected as unfounded.
The second plea: infringement of Article 52(1)(b) of Regulation No 207/2009
41The applicant submits that the Board of Appeal infringed Article 52(1)(b) of Regulation No 207/2009 in finding that he had acted in bad faith when filing his application for registration of the contested mark.
42OHIM disputes the applicant’s arguments and contends that the plea must be dismissed as unfounded.
43It should be noted first of all that the Community trade mark registration system is based on the ‘first-to-file’ principle, laid down in Article 8(2) of Regulation No 207/2009. In accordance with that principle, a sign may be registered as a Community trade mark only in so far as this is not precluded by an earlier mark, whether a Community trade mark, a trade mark registered in a Member State or by the Benelux Office for Intellectual Property, a trade mark registered under international arrangements which have effect in a Member State or a trade mark registered under international arrangements which have effect in the European Union. On the other hand, without prejudice to the possible application of Article 8(4) of Regulation No 207/2009, the mere use by a third party of a non-registered mark does not preclude an identical or similar mark from being registered as a Community trade mark for identical or similar goods or services (judgment of 11 July 2013 in SA.PAR. v OHIM — Salini Costruttori (GRUPPO SALINI), T‑321/10, ECR, EU:T:2013:372, paragraph 17). The same applies, in principle, to third-party use of a mark registered outside of the EU (judgment of 21 March 2012 in Feng Shen Technology v OHIM — Majtczak (FS), T‑227/09, ECR, EU:T:2012:138, paragraph 31).
44This rule is qualified, in particular, by Article 52(1)(b) of Regulation No 207/2009, under which a Community trade mark is to be declared invalid on application to OHIM or on the basis of a counterclaim in infringement proceedings, where the applicant acted in bad faith when it filed the application for the trade mark. Where the applicant for a declaration of invalidity seeks to rely on that ground, it is for that party to prove the circumstances which substantiate a finding that the Community trade mark proprietor had acted in bad faith when it filed the application for registration of that mark (judgment in GRUPPO SALINI, cited in paragraph 43 above, EU:T:2013:372, paragraph 18).
45The concept of ‘bad faith’ referred to in Article 52(1)(b) of Regulation No 207/2009 is not defined, delimited or even described in any way in EU legislation (judgment of 26 February 2015 in Pangyrus v OHIM — RSVP Design (COLOURBLIND), T‑257/11, EU:T:2015:115, paragraph 64).
46However, as the Board of Appeal observed in paragraph 27 of the contested decision, in its judgment of 11 June 2009 in Chocoladefabriken Lindt & Sprüngli (C‑529/07, ECR, EU:C:2009:361, paragraph 53), the Court of Justice clarified a number of points concerning the manner in which that concept was to be interpreted and applied in the context of Community trade mark legislation. It observed that the assessment of the applicant’s bad faith must take into consideration all the relevant factors specific to the particular case which pertained at the time of filing the application for registration of the sign as a Community trade mark, in particular:— the fact that the applicant knows or must know that a third party is using, in at least one Member State, an identical or similar sign for an identical or similar product capable of being confused with the sign for which registration is sought;— the applicant’s intention to prevent that third party from continuing to use such a sign;— the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought.
47That being so, as the Board of Appeal stated correctly in paragraph 30 of the contested decision, the factors referred to in paragraph 46 above are only examples drawn from a number of factors which can be taken into account in order to decide whether the applicant for registration was acting in bad faith at the time of filing the trade mark application (judgments of 14 February 2012 in Peeters Landbouwmachines v OHIM — Fors MW (BIGAB), T‑33/11, ECR, EU:T:2012:77, paragraph 20, and GRUPPO SALINI, cited in paragraph 43 above, EU:T:2013:372, paragraph 22).
48It must therefore be held that, in the context of the overall analysis undertaken pursuant to Article 52(1)(b) of Regulation No 207/2009, account may also be taken of the origin of the word or sign making up the contested trade mark, earlier use of it in business as a trade mark, the commercial logic underlying the filing of the application for registration of the sign as a Community trade mark, and the chronology of events relating to the filing (see, to that effect, judgments in GRUPPO SALINI, cited in paragraph 43 above, EU:T:2013:372, paragraph 23; of 8 May 2014 in Simca Europe v OHIM — PSA Peugeot Citroën (Simca), T‑327/12, ECR, EU:T:2014:240, paragraph 39; and COLOURBLIND, cited in paragraph 45 above, EU:T:2015:115, paragraph 68).
49It is in the light of the foregoing considerations that the lawfulness of the contested decision must be assessed, inasmuch as the Board of Appeal found that the applicant acted in bad faith at the time of filing the application for registration of the contested mark.
50In order to reach that finding, the Board of Appeal found, first, that at the time of filing the application for registration of the contested mark, the applicant was aware of the existence of the earlier Chilean figurative marks DoggiS, protected by registrations No 683048, No 857568 and No 801904 (paragraph 32 of the contested decision). It inferred that awareness from extracts from websites and a web page produced by the parties requesting the declaration of invalidity before the Cancellation Division and, for the first time, before it (paragraphs 33 to 37 of the contested decision).
51First, the applicant’s assertion that the facts and evidence that had been adduced before the Cancellation Division and that, in his submission, were the only facts and evidence that could legitimately be taken into account by the Board of Appeal, did not lead to such a conclusion, must be dismissed, as must his claim that, given the alleged infringement of Article 76 of Regulation No 207/2009, paragraphs 35 to 37 of the contested decision must be overruled.
52As observed in the assessment of the first plea in law in paragraphs 24 to 40 above, the Board of Appeal was entirely within its powers to take account of the extracts from the website and the web page referred to in paragraph 15 above, which had been produced for the first time before it by the parties requesting the declaration of invalidity.
53Secondly, it is clear that it has been established to the requisite legal standard from the various pieces of evidence submitted by the parties requesting the declaration of invalidity that the applicant was aware of the existence of the earlier Chilean figurative marks DoggiS at the time of filing his application for registration of the contested mark.
54The Board of Appeal observed correctly, in paragraph 34 of the contested decision, that an extract from the website www.doggis.es (see paragraph 35 above), in which the applicant described an undertaking named Doggis España, showed that Doggis was not a sign originally created in Spain (‘Doggis was brought to Spain by [the applicant] in 2010’), but a foreign entity which had allegedly been placed in Spain with a view to developing on a global scale. It also observed, correctly, that in the extract that undertaking was presented as the leading Doggis hot dog franchise in Spain and noted the great success achieved by the hot dog ‘in numerous countries throughout the world, including the US, Chile, Brazil, Colombia, Germany, etc.’.
55Although, as rightly pointed out by the applicant, the foregoing information is not included under the ‘Franquicias’ [Franchises] heading on the www.doggis.es website, as noted in paragraph 34 of the contested decision, but rather under the ‘Empresa’ [Business] heading, it is clear that this is merely a clerical error, one which is not liable to cast doubt on the merits of the Board of Appeal’s findings.
56Next, the Board of Appeal was also correct in observing, in paragraph 35 of the contested decision, that the extract from the website www.consultafranquicias.com, which presented the Doggis franchise as ‘a fast-food chain whose basic product is hot dogs’, noted that the ‘Doggis franchise’ had been brought to Spain in 2010 by the applicant, following the success achieved by hot dogs on the American continent, with a view to beginning expansion in Europe and also that ‘other examples of fast-food franchises brought over from America [had] proved to be a triumphant success around the world’. That extract, moreover, refers expressly to the success of the hot dog in Chile and Brazil.
57The Board of Appeal was just as correct in observing, in paragraph 36 of the contested decision, that the extract from the web page es.negocius.com/franquicia-doggis_fv1793.html stated that ‘Doggis [was] the hot dog franchise with a prestigious international reputation’, that ‘[the applicant’s chain had] just been launched in Spain and [aimed] to become the [leading] hot dog chain in Europe’.
58As rightly stated by OHIM, it is apparent from the different extracts referred to in paragraphs 54, 56 and 57 above that the applicant, before launching a franchise sign under the Doggis name in the hot dog fast-food sector in Spain, had conducted an international study of the sector and had found that hot dogs had enjoyed great success on the American continent, particularly in Chile and Brazil, which were precisely the countries where the parties requesting the declaration of invalidity had been developing a network of franchises in the same sector for a number of years. Therefore, the applicant necessarily had to be aware of the existence of not only the network of franchises belonging to the parties requesting the declaration of invalidity, but also their earlier Chilean figurative marks DoggiS at the time he filed the application for registration of the contested mark.
59This conclusion is all the more obvious when one considers that, as rightly found by the Board of Appeal in paragraph 37 of the contested decision, the earlier Chilean figurative marks DoggiS, with their red letters and yellow background, and the sign reproduced below, used by the applicant on his website www.doggis.es and in his advertising on franchising websites, are identical or nearly identical:
60The identical or nearly identical nature of the marks, combined with the earlier marks and the contested trade mark being nearly identical (see paragraphs 76 to 78 below) cannot be mere coincidence.
61This finding is not called into question by the applicant’s assertion that the use of the red and yellow colours is quite common for fast-food establishments, particularly American fast-food establishments selling hot dogs, and that the colours convey the colours of ketchup and mustard. First of all, in the present case not only are the colours used identical, their layout is also the same, with red used for the characters and yellow forming the background. Secondly, although it is possible that it is common for those colours to be used in the fast-food sector, the fact remains that it would have been entirely possible to use other colours relating to hot dogs, including, as observed by OHIM, brown, which is the colour of the frankfurter and the bun in which it is placed.
62Similarly, the Board of Appeal was correct in observing, in paragraph 37 of the contested decision, that there was a high level of similarity between the character in the shape of a hot dog appearing on the extract from the web page es.negocius.com/franquicia-doggis_fv1793.html and on extracts from the website www.doggis.es (see paragraphs 25 and 36 above) and the earlier Chilean marks No 728038 and No 724717 (see paragraph 8 above).
63Nor can the high level of similarity between the two abovementioned characters be a coincidence. As stated by the applicant, it is common in many fast-food establishments to ‘humanise’ the product. The fact remains that, in the present case, those characters have the same posture, colour layout, happy expression and accessories, including the baseball cap, white gloves and sport shoes. The documents relied on by the applicant in his attempt to show that the character is not original in the hot dog fast-food sector were produced for the first time before this Court and are therefore inadmissible as evidence, in keeping with settled case-law (see judgment of 27 June 2013 in MOL v OHIM — Banco Bilbao Vizcaya Argentaria (MOL Blue Card), T‑367/12, EU:T:2013:336, paragraph 22 and the case-law cited).
64Thirdly, it is clear that none of the arguments relied on by the applicant is liable to cast doubt on the Board of Appeal’s finding that the applicant was aware of the existence of the earlier Chilean figurative marks DoggiS protected by registrations No 683048, No 857568 and No 801904 at the time of filing his application for registration of the contested mark.
65Therefore, it is not possible to uphold the applicant’s argument, based on the extract from the website www.doggis.es referred to in the first indent of paragraph 35 above, according to which ‘[if] the objective was to begin a global expansion, it does not make sense that the undertaking and trade mark existed previously and were now being imported from the American continent into Spain’.
66It is clear from the extract that the undertaking and the doggis trade mark already existed (see paragraph 54 above) and that the applicant was purporting to be the person responsible for their introduction on the Spanish market. Furthermore, the fact that that undertaking and trade mark existed prior to their ‘import’ into Spain is not irreconcilable with the objective of ‘beginning’ a global expansion. In particular, as rightly observed by OHIM, it is entirely conceivable, given the historic and cultural links existing between Latin America and Spain, that the proprietor of a Latin American mark would take the Spanish market as its point of departure for expanding into the European continent. The indications in the extract from the website www.consultafranquicias.com (see paragraph 56 above) and in the extract from the web page es.negocius.com/franquicia-doggis_fv1793.html (see paragraph 57 above) are, moreover, to that effect.
67Nor is it possible to uphold the applicant’s argument that the reference to the American fast-food franchises’ having enjoyed triumphant success around the world (paragraph 35 of the contested decision) must be understood as referring to ‘famous North American brands from the United States such as Burger King, McDonald’s, Pizza Hut, etc.’ and that no Spanish consumer would tend to think of a Chilean fast-food undertaking.
68There is nothing in the extract from the website www.consultafranquicias.com, from which the reference in question is taken, indicating that it refers only to the North American market. On the contrary, it is clear that that extract specifically mentions not only the ‘American continent’ in general but also countries in South America, including Chile, Brazil and Colombia. Nor can the possibility be ruled out automatically that there may be successful South American signs on the fast-food market which may be known to members of the Spanish public, including consumers with links to South American countries.
69The applicant’s assertion that the reference to Chile, Brazil and the United States in the extracts from the websites www.consultafranquicias.com and www.doggis.es can be explained by the fact that those are countries with the strongest economic growth and, therefore, by ‘the link established with the potential of their respective economies, with a legitimate advertising objective of supporting a franchise system planned to be put in place in Spain’ is not convincing. It is surprising that, in those extracts, the applicant mentions Chile and Brazil, which are precisely two countries where the parties requesting the declaration of invalidity hold registrations for the doggis trade mark, but not other South American countries, such as Argentina and Mexico, which he identifies in his written pleadings as high economic-growth countries on the American continent. Moreover and in any event, the fact that the applicant used Chile as an example of a country where hot dogs had been highly successful implies that he had examined the hot dog market in that country and could not be unaware of the principal trade marks present on it, including the doggis mark.
70Next, the applicant cannot argue that there has never been any contractual or extra-contractual relationship between him and the parties requesting the declaration of invalidity.
71Although the existence of such a relationship would have sufficed to prove that the applicant had prior knowledge of the earlier marks at issue, the absence of such a relationship does not necessarily mean that there was no such knowledge.
72Lastly, the applicant’s assertions that he has never been in Chile and has never intended to develop his trade mark and business model in South America are of a purely subjective nature and do not refute the objective evidence taken into account by the Board of Appeal in order to reach its conclusion.
73In the second place, it is apparent from the contested decision that the Board of Appeal did not merely take account of the applicant’s prior knowledge of the earlier Chilean trade marks, but also found that the applicant had been in bad faith, based on certain objective factors liable to shed light on his intentions, those being the nature of the mark sought (paragraphs 38 to 41 of the contested decision), the reputation of the marks in question (paragraph 42 of the contested decision) and the commercial logic of which the filing of the application for registration of the contested trade mark forms a part (paragraph 45 of the contested decision).
74It must be borne in mind in that regard that such knowledge on the part of the trade mark applicant is not sufficient, in itself, to reach the conclusion that the applicant had acted in bad faith; consideration must also be given to the applicant’s intention at the time he filed the application for registration (judgment in Chocoladefabriken Lindt & Sprüngli, cited in paragraph 46 above, EU:C:2009:361, paragraphs 40 and 41). Although that intention is necessarily subjective, it must nonetheless be determined by reference to the objective circumstances of the particular case (judgment in Chocoladefabriken Lindt & Sprüngli, cited in paragraph 46 above, EU:C:2009:361, paragraph 42).
75Firstly, the nature of the mark applied for may be a relevant factor to determine whether the applicant acts in bad faith (see, to that effect, judgment in Chocoladefabriken Lindt & Sprüngli, cited in paragraph 46 above, EU:C:2009:361, paragraph 50).
76Indeed, the Board of Appeal was correct in finding, in paragraph 39 of the contested decision, that the contested trade mark and the earlier Chilean figurative marks DoggiS registered under registrations No 683048, No 857568 and No 801904 were identical, or at the very least nearly identical.
77To begin with, the contested trade mark and the earlier Chilean trade marks at issue are made up of the same word element ‘doggis’. The applicant’s argument to the effect that that word element lacks originality cannot be upheld. The documents produced in the annex to the application on which that argument is based were produced for the first time before the Court and are therefore inadmissible as evidence (see paragraph 63 above). Moreover, even if the word ‘doggis’ does have a meaning in relation to hot dogs, the fact remains that, as explained in greater detail at paragraph 78 below, the manner in which it is represented in the earlier Chilean trade marks at issue gives rise to a set of particular traits identical to those found in the contested mark.
78Moreover, the following visual aspects are identical in the earlier Chilean trade marks at issue and the contested trade mark:— the word ‘doggis’ is written in red;— the word ‘doggis’ is written in a specific, rounded font;— the first letter ‘d’ and the last letter ‘s’ are written in upper case, whilst the letters in the middle are in lower case;— the letters ‘d’ and ‘s’ are thicker than the letters in the middle;— the letters ‘o’, ‘g’ and ‘g’ have the same protrusion at the top.
79The only visual difference between the contested trade mark and the earlier Chilean trade marks at issue is that the latter have a yellow background, which clearly does not rule out the possibility that they may produce the same overall impression.
80In addition to the findings in paragraphs 77 and 78 above, the parties agree that the contested trade mark covers the same services as the earlier Chilean trade marks at issue as well as those goods which are indispensable for providing the restaurant services covered by those marks.
81As the Board of Appeal rightly observed at paragraph 41 of the contested decision, such a degree of similarity between those marks and the economic sectors covered by them clearly cannot be mere coincidence.
82Given the extremely high degree of similarity between the marks at issue, the applicant’s argument to the effect that both he and the parties requesting the declaration of invalidity drew inspiration from the same North American models in order to design their respective marks is not convincing.
83Secondly, with regards to the reputation of the marks at issue, it must be remembered that, for the purposes of determining whether the trade mark applicant acted in bad faith, consideration may be given to the extent of the reputation enjoyed by a sign at the time when the application for its registration was filed, since the extent of that reputation might justify the applicant’s interest in ensuring a wider legal protection for his sign (judgment in Chocoladefabriken Lindt & Sprüngli, cited in paragraph 46 above, EU:C:2009:361, paragraphs 51 and 52).
84In the present case, it should be noted that there is nothing in the file submitted to indicate that, at the time the application for registration was filed, the contested trade mark had already been used, whereas it is clear from the documents produced by the parties requesting the declaration of invalidity in an annex to their application for a declaration of invalidity that their doggis marks had been in use for a number of years in Chile and that they had been increasingly successful in recent years, which bolstered their reputation among the relevant public. In addition to the numerous fast-food establishments operating under the Doggis sign in Chile, the parties requesting the declaration of invalidity have had a presence in Brazil since 2009.
85The applicant’s argument to the effect that Chilean trade mark No 683048 was registered only recently, in January 2004, cannot be upheld. As rightly pointed out by OHIM, although extended use of a mark may be a factor to be taken into consideration in assessing its reputation, that is not the only decisive factor. In a sector such as the fast-food sector, a mark may acquire a certain reputation in a fairly short time due to other factors, such as advertising campaigns or the number of sales outlets. Moreover, on the web page es.negocius.com/franquicia-doggis_fv1793.html, the applicant himself presents Doggis as being ‘the hot dog franchise with a prestigious international reputation’.
86Moreover, and contrary to the applicant’s assertions, the finding that the doggis mark enjoys a certain reputation is not contradicted by the fact that the parties requesting the declaration of invalidity are not the proprietors of any trade mark rights in Spain or internationally. They do hold several doggis trade marks in various Latin American countries (see paragraphs 8 and 9 above). Also, the choice whether or not to protect a mark through registration is made by the proprietor alone as part of his business strategy; non-registration does not necessarily lead to the conclusion of it being absent or having a reputation on the market.
87Nor may the applicant rely successfully on the fact that the parties requesting the declaration of invalidity are not proprietors of a domain name www.doggis.com as proof of their having only a faint intention of developing internationally. The choice of whether or not to register a domain name belongs to the parties requesting the declaration of invalidity alone, as part of their business strategy. It is also clear that they had the intention to develop their activities on the European market after having built up a solid presence on the South American market, since it was precisely when Inversiones Ged sought to register the doggis mark in Spain that they learned of the existence of the contested mark.
88Thirdly, it must be held, as rightly observed in paragraph 45 of the contested decision, that the fact that the applicant sought to register a figurative mark that was virtually identical to certain of the earlier figurative marks belonging to the parties requesting the declaration of invalidity and covering the same services as their marks, as well as those goods which are indispensable for providing those services, does not make any sense from a business perspective. It is also clear that the applicant does not even rely on there being any commercial logic whatsoever to justify such a course of action, merely putting forward, in essence, a number of unsubstantiated arguments to the effect that he was unaware of the existence of the earlier marks belonging to the parties requesting the declaration of invalidity when he filed his application for registration of the contested mark.
89In the third place, in the light of all the foregoing, the conclusion is that the Board of Appeal was correct in finding, in paragraphs 44 and 45 of the contested decision, that the applicant acted in bad faith at the time he filed the application for registration of the contested mark. As rightly observed by the Board of Appeal in paragraph 45 of the contested decision, the fact that the applicant sought to effect that registration was indisputably guided by the intention to take undue advantage of the rights attached to the marks belonging to the parties requesting the declaration of invalidity. That intention is confirmed inter alia by the manner in which the applicant presents his franchise chain to the public. Not only are the contested trade mark and the earlier Chilean trade marks No 683048, No 857568 and No 801904 nearly identical and cover the same type of activities, in particular franchises in the hot dog fast-food sector; the applicant, as evidenced by the documents produced by the parties requesting the declaration of invalidity during the proceedings before OHIM (see paragraphs 25 and 35 above), intimates that his franchise chain is linked with a foreign franchise chain with a prestigious international reputation and that he will put his experience, sectorial knowledge and continuous assistance to the benefit of his future franchise holders.
90The foregoing conclusion is not called into question by the applicant’s assertion that his application for registration of the contested trade mark is part of a serious, rigorous legitimate business plan completely lacking in speculative interest in the doggis mark, having inter alia long-standing experience in the franchise sector in Spain. The evidence submitted fails to provide any explanation for why the marks at issue and the services covered by them are nearly identical. It is also clear that the applicant’s referenced experience relates to the financial sector, which is a completely different area to the fast-food sector.
91The applicant also relies on a judgment delivered by the Juzgado de lo Mercantil no 2 de Murcia (Commercial Court No 2, Murcia, Spain) on 10 May 2015 in ordinary proceedings number 263/2012, which he produced by letter lodged with the Court Registry on 18 May 2015. In his submission, that judgment is a ‘new fact’ inasmuch as it dismisses inter alia an application for a declaration of invalidity brought by the parties requesting the declaration of invalidity against his Spanish mark doggis No 2914857. He observes that, in that judgment, it was held that there are no facts establishing that he acted in bad faith when he filed his application for registration of that Spanish mark.
92It is clear that that judgment does not call into question the Board of Appeal’s conclusion referred to in paragraph 89 above, without it being necessary to rule on the admissibility of this new piece of evidence, which OHIM disputes.
93First of all, it is apparent from that judgment that, as regards the application for a declaration of invalidity brought before it, the court conducted an essentially factual analysis on the basis of the evidence adduced by the parties to that dispute. Clearly that analysis does not concern the interpretation of EU trade mark law, nor does the applicant offer any explanation as to how that might be the case.
94Additionally, that judgment may be appealed. The possibility thus cannot be ruled out that it has not yet acquired the status of res judicata.
95Lastly and in any event, it must be recalled that the EU trade mark regime is an autonomous system with its own set of rules and objectives peculiar to it and applies independently of any national system, and the legality of decisions of the Boards of Appeal of OHIM must be evaluated solely on the basis of Regulation No 207/2009 as interpreted by the EU Courts (judgment of 17 July 2008 in L & D v OHIM, C‑488/06 P, ECR, EU:C:2008:420, paragraph 58).
96It follows that the second plea in law must be dismissed, as must the action in its entirety.
Costs
97Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.
Operative part
On those grounds,THE GENERAL COURT (Sixth Chamber)hereby:
1.Dismisses the action;
2.Orders Mr José-Manuel Davó Lledó to pay the costs.
Delivered in open court in Luxembourg on 28 January 2016.
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