BACKGROUND TO THE DISPUTE

On May 2013, Mr. Ladislav Zdút filed an application for registration of the following EU trade mark for goods in classes 18, 24 and 25. On June 2019, Ms. Isabel Nehera, Mr. Jean-Henri Nehera and Ms. Natacha Sehnal, filed an application for a declaration of invalidity against the contested mark, pursuant to art.  59.1 b) of Regulation 2017/1001 (hereinafter EUTMR), claiming the bad faith of Mr. Ladislav when knowing their grandfather’s identical named business for clothing and accessories used in Czechoslovakia in the 1930’s. The Cancellation Division dismissed the application.

On June 2020, the applicant opponents filed an appeal against the earlier Cancellation Division’s decision, and the Board of Appeal upheld it, annulling the latter decision and declaring the contested mark invalid. The Board found that the former Czechoslovak trade mark retained a certain surviving reputation, and that Mr. Ladislav had attempted to create an association between himself and the former trade mark.

The trademark applicant decided to file an appeal against the General Court.

DECISION

In this case, the appeal was upheld, annulling the Board of Appeal’s decision.

The trademark applicant relied on a single plea in law, alleging the infringement of art. 52.1 b) EUTMR.

In the first place, the Court decided to examine the factual and historical context. It found that it is true that the applicant opponents’ grandfather, Mr. Jan Nehera, established a business in the former Prostějov, the name of which made reference to his surname. This business was quite successful, and on January 1946 it was nationalised and its ownership was transferred to the Czechoslovak State, who changed the business name. At that time, Mr. Jan had settled in Morocco, where he continued to operate two clothing shops with the same name, and where he died in 1958. It was also true that Mr. Jan filed a trade mark in Czechoslovakia identical to the contested mark, registered in June 1936. It was also found that a third party registered in the Czech Republic an identical national trade mark between 1992 and 2002.

Secondly, the Court proceeded to examine the legal protection and use of the former Czechoslovak mark and Mr. Jan Nehera’s name. In this sense, EUIPO acknowledges that the former Czechoslovak mark lapsed in 1948, and was no longer used after that year, bedsides in Morocco in the 1950’s until Mr. Jan’s death. Regarding the identical third-party national mark between 1992 and 2002, it does not appear that its holder ever used it. The parties agreed on the fact that the former Czechoslovak mark and Mr. Jan Nehera’s name had a certain reputation or celebrity in Czechoslovakia in the 1930’s and 40’s. But the Court found that the interveners have not provided proof that in 2013  (year of the contested mark application), the former mark still enjoyed a certain reputation in any Member State, or that Mr. Jan Nehera’s name was still famous among a significant portion of the relevant public. Consequently, neither the former Czechoslovak trade mark nor Mr. Jan Nehera’s name were either registered or protected, or used by a third party to market clothing, or even well known among the relevant public.

The decision of the Board of Appeal is annulled.

[Case T-250/21, ECLI:EU:T:2022:430, 06/07/2022]