Schoenherr successfully represented Tehnoexport, a Serbian manufacturer of heating, ventilation and air conditioning products, in trademark cancellation proceedings against four trademarks before the EU Intellectual Property Office (EUIPO). In the proceedings, Tehnoexport claimed that its competitor filed several trademarks in bad faith, since these contained signs which had been used by Tehnoexport. The EUIPO decided that the trademarks must be cancelled due to bad faith and these decisions were confirmed by the Fifth Board of Appeal of the EUIPO.
In two of the four cases, the competitor filed appeals to the General Court of the EU (GC). After an oral hearing at the GC in Luxembourg, where Schoenherr IP partner Christian Schumacher presented oral arguments on behalf of Tehnoexport, on 6 March 2024 the GC rendered a decision confirming the cancellation of the competitor's trademarks due to bad faith, thereby upholding the appealed decisions by the EUIPO. The full decision can be found here.
While the decision is still subject to appeal to the Court of Justice of the EU (CJEU), such an appeal to the highest EU Court is restricted to those raising an issue that is significant with respect to the unity, consistency or development of Union law. Out of the many appeals in IP cases, only a handful have been accepted for decision by the CJEU under this threshold since the restriction was introduced a few years ago.
"Bad faith applications are an area in EU trademark law where case law is less abundant and several issues as regards the concept of bad faith and its application to a specific case still need guidance by the European Courts," said Vienna-based IP partner Christian Schumacher, who was in charge for pleading the case at the EUIPO and the GC. "We are happy that with this case we could contribute to some further guidance."
"This case, where our Schoenherr EU Trademark team led our Serbian client to success, is a great showcase of our regular collaboration on cross-border IP mandates," Andrea Radonjanin, IP partner in Schoenherr's Belgrade office, added.
The Schoenherr team assisting Tehnoexport in these EU trademark cancellation proceedings was led by Christian Schumacher (partner) and Andrea Radonjanin (partner) and further consisted of Yelyzaveta Semenovykh (associate) and Andrej Zoric (associate).