EUROPEAN UNION: Filing of Goods in Incorrect Class Is Not Bad Faith

The General Court (GC) has held that the registration of a mark for goods in an incorrect class does not in itself demonstrate bad faith (T166/23) in a decision published on September 4.

DecoPac owned the word mark DECOPAC, registered in Classes 29, 30, and 35. The mark was partially revoked for non-use for all goods/services except those in Class 30, that is, “edible and inedible decorations for cakes and pastries.”

The applicant sought a declaration of invalidity of the mark, relying on Article 59(1)(b) of Regulation 2017/1001. The applicant argued that filing “inedible” decorations in Class 30 when that class was reserved solely for edible goods demonstrated bad faith on the part of DecoPac. Further, at the time of filing the application, DecoPac had no intention to use the mark for the goods and services in Classes 29 and 35.

The Board of Appeal refused to grant the declaration.

The GC upheld the Board of Appeal’s decision. The GC accepted that registration of inedible decorations in Class 30 was incorrect, but held that the registration of a mark for goods in an incorrect class does not in itself demonstrate a dishonest state of mind or intention within the meaning of the existing case law on bad faith, including Koton (C104/18 P, EU:C:2019:724) and Sky and Others (C371/18, EU:C:2020:45).

The GC held that the Nice Classification has purely administrative purposes and therefore the incorrect classification of goods was not capable of altering the scope of protection conferred on a trademark. The classification error was not such as to confer on DecoPac any advantage over its competitors. Accordingly, the applicant had not succeeded in establishing that DecoPac had the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties, or 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 trademark.

As regards the goods/services in Classes 29 and 35, it was apparent from case law that bad faith cannot be presumed on the basis of the mere finding that, at the time of filing its application for registration, DecoPac had no economic activity corresponding to the goods/services referred to in the application. Further, the claim that DecoPac had no intention to use the mark for the goods/services in Classes 29 and 35 was speculative and unsubstantiated.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

© 2024 International Trademark Association