In accordance with Article 1291(1)(12) of the Industrial Property Law and Article 7(1)(g) of Regulation 2017/1001, so-called deceptive signs, i.e. those that may confuse customers as to the nature, quality, or geographical origin of the goods, cannot be registered. At the application stage, it can often be difficult to determine whether a particular trademark could be misleading as to the origin of the goods. On the date of application, the trademark office is not aware of plans related to the use of the trademark applied for. In the case of an application for a declaration of invalidity of a deceptive trademark, its examination requires a demonstration that the trademark applied for is likely to cause confusion, already at the time of filing the application, irrespective of the use of such a trademark subsequently (judgment of the CJEU of 29 June 2022, La Irlandesa 1943, T-306/20, EU:T:2022:404, par. 66).

Facts of the case

Giuliani SpA filed an application with the EUIPO to invalidate the trademark registered for goods in class 5 (i.a. vitamins, vitamin preparations, herbal preparations, mineral supplements) of the Nice Classification. The application was based on two grounds:

• deceptive nature of the trademark – according to Giuliani SpA, the trademark, through its graphic elements (in particular the red background colour) and the word element (‘Swisse’), could have given consumers false information that the goods originated from Switzerland, while the goods marked with the disputed trademark were produced in Australia;
• Bad faith – according to Giuliani SpA, the proprietor of the trademark deliberately used elements which suggested a connection with Switzerland, a country with a high reputation, and intended to use the trademark only for products which had no connection with Switzerland.

The Cancellation Division of the EUIPO upheld the application for invalidation, but the decision was appealed to the Board of Appeal, which overturned the contested decision, thus dismissing the application for invalidation of the disputed trademark.

CJEU judgement

The CJEU agreed with the EUIPO Board of Appeal and dismissed the action. It pointed out that the list of goods covered by the disputed trademark did not contain any indication as to their geographical origin, nor was it impossible for the goods covered by the registration to have been produced in Switzerland. Therefore, in the present case, there was no inconsistency in the filing date between the information that the disputed trademark could convey and the goods designated, so that it could not be concluded that the trademark was deceptive on the filing date.

Notwithstanding the above, the CJEU also pointed out that the word ‘swisse’ does not originate from English, French or any other language used in the European Union. The word element of the disputed mark could therefore not be misleading. Moreover, the CJEU agreed with the EUIPO Board of Appeal that the possibility of misleading did not arise from the graphic elements either, such as the red background colour and the white font (i.e. elements corresponding to the colours of the Switzerland flag).

The allegation of bad faith on the part of the trademark applicant was also dismissed. The CJEU recalled that if the objective circumstances of the specific case, as invoked by the applicant for invalidation, may lead to the rebuttal of the presumption of good faith enjoyed by the owner of the disputed trademark at the time of filing the application for registration, the owner of the trademark is under an obligation to provide a credible explanation of the objectives and commercial logic of the application. However, it emphasised that in the present case, no evidence had been provided that the proprietor of the trademark had planned to market goods under the contested mark that had no connection to Switzerland.

Summary

The CJEU judgement in case T-442/23 confirms that the assessment of the deceptive nature of a mark is based on the facts existing at the date of filing of the disputed mark, and not on subsequent evidence of its use. This means that even if the trademark ‘Swisse’ could suggest that the goods in question come from Switzerland, in assessing the deceptive nature of a mark, it is crucial that the goods were produced in Australia after the disputed trademark was applied for. The CJEU emphasised that, for the purposes of the assessment, subsequent circumstances of the use of the trademark are irrelevant, and what is crucial is what results from the information available on the date of application. In this way, the CJEU reinforces the principle that the assessment of the deceptive nature of a trademark is based on its original application. The judgement in question, although in line with the regulations and established principles of interpretation, illustrates that the registration of a trademark does not in itself determine the legality of its use. Moreover, it illustrates that the regulations on trademark invalidation do not always allow for the elimination of infringing trademarks from the register. Therefore, a correct and courageous interpretation is necessary, in particular within the premise of bad faith.

Full text of the judgement: https://curia.europa.eu/juris/document/document.jsf?text=&docid=%0b297461&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=203298