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On May 6, 2013, the applicant filed an application for registration of the EU trademark

for clothing (class 25) and some other goods such as bed covers (class 24) and leather and travelling bags (class 18) to name a few examples. The mark was registered on 31 October 2014.
During the 1930s, “NEHERA” was a well-known brand, used by a company founded by Mr. Jan Nehera. After World War II the trademark was not used any more as a consequence of the company’s nationalisation and re-branding.
On June 17, 2019, the founders’ grandchildren Ms Isabel Nehera, Mr Jean-Henri Nehera and Ms Natacha Sehnal, filed an application for a declaration of invalidity against that mark claiming bad faith. With decision of April 22, 2020, EUIPO’s Cancellation Division dismissed the application for a lack of proof of the applicant’s bad faith. EUIPO’s second Board of Appeal, however, upheld the appeal filed by Mr. Nehera’s grandchildren, declaring the contested mark invalid: the sign was a well-known mark and had been put to genuine use in Czechoslovakia in the 1930s. Moreover, the applicant was aware of the existence and celebrity both of Mr Jan Nehera and of the former Czechoslovak trademark, which retained a certain surviving reputation. The association between the trademark owner and the former Czechoslovak trademark would amount to an unfair advantage of the reputation of Mr Jan Nehera and of the former Czechoslovak trademark. The applicant requested the General Court to annul the decision as a residual fame or reputation on the filing date in 2013 was not proven.
The General Courts confirms the well-established case law according to which the concept of bad faith presupposes the presence of a dishonest state of mind or intention. By way of further specification, the General Court adds that the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties, or with the intention of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark, in particular the essential function of indicating origin, shall be considered bad faith. Exemplary factors which may be taken into consideration include firstly whether the applicant knows (or must know) that a third party is using, a similar sign for a similar product capable of being confused with the sign for which registration is sought, secondly, the applicant’s intention to prevent that third party from continuing to use such a sign and, thirdly, the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought. Other factors relevant for an overall assessment may include the origin of the sign at issue and of its use since its creation, the commercial logic for the filing of the application for registration of the sign as a European Union trade mark, and the chronology of events leading up to that filing. With respect to the degree of legal protection of the prior sign the Court analysed whether in absence of any registration and current use a “certain surviving reputation”, a “historic value” or the perception of the sign’s founder as a “celebrity” could be proven.
In the present case the General Court excluded bad faith as none of the aforementioned aspects were proven. Moreover, it observed that the applicant dedicated considerable economic efforts for reviving the forgotten trademark.
The decision while in line with precedent case law regarding efforts to revive forgotten trademarks adds at least two interesting aspects:
For analysing bad faith, the question whether an unfair advantage is obtained is of paramount importance: where an applicant tries to ride on the coat-tails of a formerly renowned sign or name in order to benefit from its power of attraction, its reputation and its prestige and, without any financial compensation and without having to make any efforts of its own in that regard, to exploit the commercial effort expended by the proprietor or user of that sign or of that name in order to create and maintain the image of that sign or of that name an unfair advantage appears quite obvious. Secondly, the General Court’s reasoning seems to imply that a “certain surviving reputation”, a “historic value” or even the qualification of a person as a “celebrity” – where sufficiently proven – could be regarded as suitable indicia for a dishonest state of mind, even in case the former sign does not benefit any current protection as registered or unregistered trademark.

Tankred Thiem