Trib. UE 22 marzo 2023, T-366/21, Coinbase c. EUIPO+bitFlyer:
<<34 Furthermore, in order to determine whether the applicant is acting in bad faith, all the relevant factors specific to the particular case which pertained at the time of filing the application for registration of the sign as an EU trade mark must be taken into consideration, in particular: (i) the fact that the applicant knows or must know that a third party is using, in at least one Member State, an identical or similar sign for an identical or similar product capable of being confused with the sign for which registration is sought; (ii) the applicant’s intention to prevent that third party from continuing to use such a sign; and, (iii) the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought (judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli, C‑529/07, EU:C:2009:361, paragraph 53).
35 However, it is apparent from the wording used by the Court of Justice in the judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli (C‑529/07, EU:C:2009:361), that the factors listed are merely examples drawn from a number of factors which may be taken into account in order to decide whether the applicant for registration of a sign as an EU trade mark was acting in bad faith at the time of filing the application for the mark. In that regard, it should be noted that, in the context of the overall analysis undertaken pursuant to Article 52(1)(b) of Regulation No 207/2009, account may also be taken of the origin of the sign and its use since its creation, the commercial logic underlying the filing of the application for registration of that sign as an EU trade mark, and the chronology of events leading up to that filing (see judgment of 16 December 2020, Pareto Trading v EUIPO – Bikor and Bikor Professional Color Cosmetics Małgorzata Wedekind (BIKOR EGYPTIAN EARTH), T‑438/18, not published, EU:T:2020:630, paragraph 21 and the case-law cited).
36 Having regard to the foregoing considerations and in the light of the applicant’s arguments, it is necessary to assess whether the Board of Appeal correctly took into consideration all the relevant factors specific to the particular case which pertained at the time of filing the application for registration by the proprietor of the contested mark.
37 It must be borne in mind that the Board of Appeal considered, in essence, in paragraph 14 of the contested decision, that the scope of the appeal was limited to whether the proprietor of the contested mark acted in bad faith in relation to the dissimilar goods and services in respect of which the mark remained valid. That definition of the scope of the dispute was in line with the applicant’s appeal before the Board of Appeal, which sought the annulment of the decision of the Cancellation Division only in so far as it had rejected the application for a declaration of invalidity, namely for the dissimilar goods and services.
38 However, even if the scope of the appeal before the Board of Appeal was limited to the dissimilar products and services, in order to take into consideration all the relevant factors specific to the particular case when assessing bad faith, in accordance with the case-law referred to above, the Board of Appeal should nevertheless have taken into consideration the similar products and services. Those goods and services formed part of those referred to by the proprietor of the contested mark at the time of filing its application for registration. Therefore, the assessment of bad faith by the Board of Appeal should have also covered the similar goods and services and the evidence relating to them>>.
Il Trib. annulla la decisione del board of appel accogliendon e l’impugnazione.