On February 21, 2024, the General Court of the Court of Justice (“General Court”) rendered its decision (“Decision”) regarding the registration of trademark under the European Union Intellectual Property Office (“EUIPO”) with bad faith, due to its identity to a well-known trademark registered only in Turkey.
Background of the Case
On November 6, 2019, D-Market Elektronik Hizmetler ve Ticaret AS (“Intervener”), an establishment in Turkey, filed an application with the EUIPO for a declaration of invalidity for the trademark “hepsiburada”, registered in 2017 by Dendiki BV (“Applicant”), an establishment in the Netherlands.
The Intervener’s application relied upon the ground that the Applicant (more precisely, its predecessor in title) had acted in bad faith in filing the trademark application and therefore, the trademark “hepsiburada” must be declared invalid.
Following the decisions of the Cancellation Division and the Board of Appeal, the case was brought to the General Court, which evaluated the facts of the case on the basis of Article 52/1-b of the then applicable Regulation No 207/2009 on the Community Trademark (“Regulation No 207/2009”) that stipulates the declaration of invalidity of trademarks filed in bad faith.
Evaluations on the Determination of Bad Faith
During its evaluations, the General Court referred to the judgment of Koton Mağazacılık Tekstil Sanayi ve Ticaret v EUIPO, dated September 12, 2019, by stating that the absolute ground for invalidity based on bad faith is determined on the basis of the applicant’s purpose for filing the registration. Accordingly, where an applicant has the “intention of undermining, in a manner inconsistent with honest practices, the interests of third parties”, which is objectively determined by a competent authority by considering all the factual circumstances relevant to the case, the applicant will be deemed to have acted in bad faith and its trademark will be declared invalid.
In its Decision, the General Court listed the following factors to be taken into account when analysing whether the applicant is in fact acting in bad faith:
Whether 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 or service 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 or from marketing a product,
The degree of legal protection of the signs in question,
The origin of the contested sign and the way it has been used since its creation,
The commercial logic of filing for registration of the sign as an EU trademark, and
The chronology of events relating to the filing.
Furthermore, the Decision stated that even though the good faith of a trade mark applicant is being presumed until proven otherwise, it is for the proprietor of that mark to provide plausible explanations regarding the objectives and commercial logic and their intentions at the time of the application for registration of that mark, with evidence capable of convincing that, in spite of the existence of objective circumstances, those intentions were legitimate.
In the concrete case, the General Court thoroughly examined the following arguments put forward by the Applicant:
Legal Protection of the Trademark
The Applicant claimed that the Intervener’s trademark “hepsiburada” has a low level of legal protection since it is not registered in the European Union and is devoid of any distinctive character.
While evaluating these claims, the General Court underlined that the Intervener’s earlier Turkish trademarks and their use within the European Union is relevant to the assessment of bad faith. Moreover, the General Court noted that the absolute ground of bad faith may be relied on by any person and not only by holders of prior rights, since the purpose of the related provision is to protect the public interest.
As a result, the General Court established that the reputation of the Intervener’s trademark in Turkey is one of the key elements that must be considered when assessing bad faith and that the absence of such reputation in the European Union and the alleged lack of distinctiveness are not significant for the concrete case.
Identity/Similarity of Goods and Services
The Applicant claimed that the Intervener’s trademark is only registered for services in Classes 35, 38 and 42; whereas the Applicant’s contested trademark is registered for goods in Class 21 and therefore, there is no identity or similarity of goods and services between the trademarks.
The General Court rejected this argument, emphasizing that the identity or similarity of goods and services is not sufficient to determine the bad faith and that further factors must be evaluated.
Awareness of the Use
The Applicant claimed that it did not know or should have known about the Intervener’s Turkish trademark “hepsiburada”, since the Intervener had no registered trademarks in the European Union and was not active on the European market. The Applicant further stated that it had no commercial relations or links with the Intervener.
After evaluating the Board of Appeal’s findings that the Applicant actually had a direct connection with Turkey and the Turkish e-commerce sector and the fact that the Intervener’s earlier Turkish trade mark was well-known in Turkey and its platform was one of the main Turkish e-commerce suppliers; the General Court concluded that the Applicant was aware of the use of the trademark “hepsiburada”, at least in Turkey, at the time of its trademark registration application in 2017. Furthermore, the General Court evaluated that the absence of a link or relationship does not mean that the Applicant was unaware of the use of the trademark.
The Intention
The Applicant claimed that at the time of the registration application, the extensive research into the sign hepsiburada did not reveal any identical or similar trademark or trade name in the European Union, and that the intention behind the registration of the contested trademark was for commercial purposes and in line with its legitimate business strategy. Further, the Applicant argued in the absence of evidence of its intention to take advance of the reputation and well-known character of the Intervener’s Turkish marks, there should be a presumption of good faith and that the Intervener must bear the consequences of not registering its marks in the European Union.
On the other hand, underlining that the Applicant had failed to provide plausible explanations and legitimate intentions regarding the application for registration, the General Court stated that it was unlikely that the Applicant intended to use the mark honestly in the course of trade, considering the following factors:
The Applicant’s mark is identical or very similar to the Intervener’s earlier Turkish marks,
the Applicant’s website ‘www.hepsiburada.life’ has been presented as “the European branch of the Intervener’s website ‘www.hepsiburada.com’”,
the Applicant did not demonstrate the use of contested mark as an indication of the commercial origin of their business strategy,
the Applicant filed other EU trademark applications corresponding to the Turkish websites of third parties.
As a result, the General Court held that the Applicant acted in bad faith at the time of filing the contested mark.
Authors: Hatice Ekici Tağa, Sümeyye Uçar, Begüm Alara Şahinkaya
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