Report s of C ases JUDGMENT OF THE GENERAL COURT (Fifth Chamber) 8 May 2014 * (Community trade mark — Invalidity proceedings — Community word mark Simca — Bad faith — Article 52(1)(b) of Regulation (EC) No 207/2009) In Case T-327/12, Simca Europe Ltd, established in Birmingham (United Kingdom), represented by N. Haberkamm, lawyer, applicant, v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Schifko, acting as Agent, defendant, the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being GIE PSA Peugeot Citroën, established in Paris (France), represented by P. Kotsch, lawyer, ACTION brought against the decision of the First Board of Appeal of OHIM of 12 April 2012 (Case R 645/2011-1), relating to invalidity proceedings between GIE PSA Peugeot Citroën and Simca Europe Ltd, THE GENERAL COURT (Fifth Chamber), composed of A. Dittrich, President, J. Schwarcz (Rapporteur) and V. Tomljenović, Judges, Registrar: E. Coulon, having regard to the application lodged at the Court Registry on 16 July 2012, having regard to the response of OHIM lodged at the Court Registry on 20 November 2012, having regard to the response of the intervener lodged at the Court Registry on 9 November 2012, * Language of the case: German. EN ECLI:EU:T:2014:240 1 JUDGMENTOF 8. 5. 2014 — CASE T-327/12 SIMCA EUROPE v OHIM — PSA PEUGEOT CITROËN (SIMCA) 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 Court, to give a ruling without an oral procedure, gives the following Judgment Background to the dispute 1 On 5 December 2007, Mr Joachim Wöhler (‘the former proprietor’) filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)). 2 The mark for which registration was sought is the word sign Simca (or ‘the mark at issue’). 3 The goods in respect of which registration was sought fall within Class 12 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 (‘the Nice Agreement’), and correspond to the following description: ‘Vehicles; apparatus for locomotion by land, air or water.’ 4 The trade mark application was published in Community Trade Marks Bulletin No 16/2008 of 21 April 2008 and the word sign Simca was registered as a Community trade mark on 18 September 2008 under No 6489371 for all the goods listed in paragraph 3 above. 5 On 29 September 2008, the intervener — GIE PSA Peugeot Citroën — applied, in accordance with Article 51(1)(b) of Regulation No 40/94 (now Article 52(1)(b) of Regulation No 207/2009), for a declaration that that Community trade mark was invalid in respect of all the goods for which it had been registered. In essence, the intervener alleged that the former proprietor had been acting in bad faith at the time when he filed the application for registration of the mark at issue. His sole objective in making that application was to prevent the use of the name ‘simca’ in order to market the goods covered by the application for registration, even though the intervener had rights over that name which were prior to the application. In that regard, the intervener referred, inter alia, to the fact that it was the holder of an international mark SIMCA, registered under No 218957 and protected since 1959, inter alia in Germany, Spain, Austria and the Benelux, in particular for ‘vehicles; apparatus for locomotion by land, air or water’ in Class 12 of the Nice Agreement, and of the French mark SIMCA, registered under No 1606604 since 1990, inter alia for ‘motor vehicles’ (véhicules automobiles) in the same class. The intervener claimed that, although those marks had no longer been used in recent years, its rights to the mark had been maintained. The intervener noted that the ‘known’ motor vehicle mark SIMCA had been created by a French motor manufacturer as early as 1934. The earlier French mark was requested for the first time in 1935 and was taken over in 1978 by Automobiles Peugeot, SA, which used it intensively throughout the world, including in Europe. The intervener further maintained that, in 2008, it had twice requested the former proprietor of the mark to surrender the mark at issue. In response, the former proprietor had attempted to ‘blackmail’ the intervener into offering him financial compensation. According to the intervener, the trade mark application had been made by the former proprietor in order to improve his financial situation through extortion, without there being any genuine desire on his part to use the mark. Given also that the 2 ECLI:EU:T:2014:240 JUDGMENTOF 8. 5. 2014 — CASE T-327/12 SIMCA EUROPE v OHIM — PSA PEUGEOT CITROËN (SIMCA) contractual relationship between the parties had ended shortly before the Community trade mark application at issue was filed, the intervener submitted that it was merely a ‘speculative mark’ or a ‘blocking mark’. 6 By decision of 25 January 2011, the OHIM Cancellation Division rejected in its entirety the application for a declaration of invalidity. 7 On 24 March 2011, the intervener brought an appeal against that decision. 8 On 29 April 2011, the applicant — Simca Europe Ltd — was entered in OHIM’s register as the new proprietor of the mark at issue. 9 By decision of 12 April 2012 (‘the contested decision’), the First Board of Appeal of OHIM upheld the intervener’s appeal, annulled the Cancellation Division’s decision and, lastly, declared the mark at issue to be invalid. The grounds relied on by the Board of Appeal were divided into three parts, relating respectively to: (i) preliminary observations; (ii) ‘undisputed’ facts; and (iii) the very existence of bad faith on the part of the former proprietor at the time when the trade mark application was filed. 10 In the first place, as regards the preliminary observations, the Board of Appeal found that the applicant, as the new proprietor of the mark at issue, ‘had to accept direct liability for the conduct’ of the former proprietor, as the initial applicant for that mark. 11 The Board of Appeal also categorised as irrelevant a reference made by the applicant to a judgment of the Bundesgerichtshof (Federal Court of Justice, Germany) concerning the German mark SIMCA. The Board of Appeal noted in that regard that the Community trade mark scheme is an autonomous system with its own set of objectives and rules peculiar to it, and it applies independently of any national system. In addition, the Board of Appeal stated that it was unaware of the evidence lodged in the parallel proceedings in Germany and, accordingly, the abovementioned judgment could not have the authority of precedent. 12 In the second place, as regards the ‘undisputed’ factors, of decisive importance — according to the Board of Appeal — for the assessment of the facts in the present case, the Board of Appeal first noted that motor vehicles covered by the SIMCA mark have been sold since the 1930s and that the intervener or an undertaking belonging to its group had taken over that mark in 1978. The Board of Appeal also emphasised that the intervener was the proprietor of two figurative marks, one of which — the national mark registered under No 121992 — was protected in France and the other — the international mark registered under No 218957 — in the Czech Republic, Germany, Spain, Italy, Hungary, Malta, Portugal, Romania and the Benelux, as well as in some countries which are not members of the European Union. According to the Board of Appeal, those marks were still registered when the contested decision was adopted, at least for Automobiles Peugeot vehicles in Class 12, Automobiles Peugeot being a member of the intervener’s group. 13 Secondly, according to the Board of Appeal, although the intervener had ceased to market vehicles under the SIMCA mark at the end of the 1970s, that mark enjoyed a wide reputation, which, although it may have diminished over time, still existed when the contested decision was adopted. 14 Thirdly, the Board of Appeal noted that, for over 18 months, the former proprietor had worked for the intervener as an independent entrepreneur in the software field in Cologne (Germany) and, subsequently, in Bremen (Germany). According to the Board of Appeal, he knew the history of the SIMCA mark, as could be seen from some of his letters to the intervener. ECLI:EU:T:2014:240 3 JUDGMENTOF 8. 5. 2014 — CASE T-327/12 SIMCA EUROPE v OHIM — PSA PEUGEOT CITROËN (SIMCA) 15 Fourthly, the Board of Appeal stated that, even before registration of the mark at issue was applied for, the former proprietor was already in contact with an Indian company in order to study a development project for a motor vehicle. However, that project had not yet been implemented when the contested decision was adopted. The Board of Appeal noted in that regard that the former proprietor’s letters show that he was searching for a mark ‘which was no longer used or which had not been registered’.