EU General Court rules over PLAN B trade mark

On 29 May, the General Court of the European Union issed a decision in a trade mark dispute between two Spanish book publishers in case T-777/22.

The dispute centers on the EU figurative mark N. 017887136, 'PLAN B', filed in April 2018 by Penguin Random House Grupo Editorial. In July 2022, another Spanish company, Ediciones Literarias Independientes, S.L. (ELI), filed an application with the EUIPO for a declaration of invalidity of the registered mark, in particular for Classes 9 and 16 of the Nice Classification, which cover goods such as e-book readers, e-books, paper and cardboard, printed matter and printed publications. The declaration of invalidity was based, on the one hand, on the bad faith of the applicant under Article 59(1)(b) of the EU Trade Mark Regulation and, on the other hand, on a 2019 judgment of the High Court of Justice of Madrid, which refused to register the ELI’s Spanish figurative mark no. 3641418, PLAN B.

In first instance, the Cancellation Division rejected the application for a declaration of invalidity. However, the Board of Appeal of the EUIPO found that the registration of Penguin Random House’s EU trade mark was contrary to the fair and established practices of the trade. It based its decision on the existence of the ELI's earlier Spanish figurative mark No 366342, 'Ediciones Plan B', which covered educational, entertainment and cultural services in Class 41 of the Nice Classification, the fact that it had already seen a trade mark application rejected for the same sign by the Spanish trade mark office after, ELI had filed an opposition, and that Penguin Random House knew that by applying to an EU trade mark they were going to hurt the interests of ELI by creating confusion within the mind of consumers. 

The General Court of the European Union had to decide whether the applicant had indeed acted in bad faith in applying for registration of the mark 'PLAN B' in the European Union and whether the registration of that mark infringed the defendant's rights. Bad faith is recognised in these where it can be shown that a party filed a trade mark application not in order to compete fairly in the internal market, but with the intention of harming a competitor in a manner not in accordance with honest practices. 

The General Court upheld the Board of Appeal's decision that the Penguin Random House had acted in bad faith when it applied for registration of the trade mark 'PLAN B' in the European Union. It found that the application reflected a disregard for the rights of third parties and a clear intention to take advantage of the reputation and recognition associated with the previously registered sign.

The Court considered that the registration of the trade mark 'PLAN B' and its similarity to the previously registered trade mark would cause confusion in the market and affect the ELI’s exclusive rights in Spain.