Judgment of the General Court (First Chamber) of 8 March 2017.Ilona Biernacka-Hoba v European Union Intellectual Property Office.EU trade mark — Invalidity proceedings — EU figurative mark Formata — Absolute ground for invalidity — Absence of bad faith — Article 52(1)(b) of Regulation (EC) No 207/2009 — Relative ground for invalidity — Likelihood of confusion — Article 53(1)(a) and Article 8(1)(a) and (b) of Regulation (EC) No 207/2009.Case T-23/16.

Judgment // 08/03/2017 // 2 min read
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Judgment of the General Court (First Chamber) of 8 March 2017 —Biernacka-Hoba v EUIPO — Formata Bogusław Hoba (Formata)

(Case T‑23/16)

(EU trade mark — Invalidity proceedings — EU figurative mark Formata — Absolute ground for invalidity — Absence of bad faith — Article 52(1)(b) of Regulation (EC) No 207/2009 — Relative ground for invalidity — Likelihood of confusion — Article 53(1)(a) and Article 8(1)(a) and (b) of Regulation (EC) No 207/2009)

  1. EU trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Applicant in bad faith when lodging the trade mark application — Criteria for assessment — Taking into account of all relevant factors at the time of filing the application for registration — Applicant’s knowledge that a third party is using an identical or similar sign — Intention of the applicant — Degree of legal protection of the signs at issue — Commercial logic underlying the registration of the contested sign as an EU trade mark — Chronology of events characterising the filing of the trade mark application

(Council Regulation No 207/2009, Art. 52(1)(b))

(see paras 42-44)

  1. EU trade mark — Appeals procedure — Action before the EU judicature — Power of the General Court to alter the contested decision — Limits

(Council Regulation No 207/2009, Art. 65(3))

(see para. 58)

Re:

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 4 November 2015 (Case R 102/2015-2), relating to invalidity proceedings between Ms Biernacka-Hoba and Formata Bogusław Hoba.

Operative part

The Court:

  1. Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 4 November 2015 (Case R 102/2015-2), in so far as the Board of Appeal dismissed the application for a declaration of invalidity based on a relative ground for invalidity;

  2. Dismisses the action as to the remainder;

  3. Orders EUIPO to bear its own costs and to pay half of the costs incurred by Ms Ilona Biernacka-Hoba;

  4. Orders Ms Biernacka-Hoba to bear half of her own costs.

Trade marks