On the basis of its community trademark HYDRA BRONZER of 2003, l’OREAL brought an action against GUINOT for infringement and cancellation of its French trademark HYDRA BRONZ. In response, GUINOT filed a counterclaim for cancellation of L’OREAL’s trademark for fraudulent application.

GUINOT contacted L’OREAL a short time before the filing of its CTM HYDRA BRONZER, to try to purchase the trademark HYDRA BRONZE hold at that time by a subsidiary of L’OREAL (that mark had not been used since at last five years).

Considering L’OREAL’S refusal, GUINOT brought an action against L’OREAL’S subsidiary for cancellation for non use of the trademark HYDRA BRONZE. Finally, GUINOT withdraw its action because of the withdrawal of the litigious trademark. The Court reminds rule 51-1 b) of the Community Regulation, according to which a trademark should be cancelled if it has been filed in bad faith.

The Court concludes that, regarding the present case, the bad faith of L’OREAL is demonstrated and pronounces the cancellation of the its Community mark HYDRA BRONZER. To support its decision, the Court reminds that the bad faith has to be assessed according to the following criteria:

1. The applicant should, at the time of the filing, be aware of the intent of the third party to file the litigious sign. In the present case, L’OREAL couldn’t unaware the intent of GUINOT to file the trademark HYDRA BRONZ with regards to its purchase proposal of the L’OREAL’S subsidiary.

2. The trademark’s function is vitiated. In the present case, L’OREAL, which manages its subsidiary’s trademarks, couldn’t unaware that its subsidiary doesn’t give any importance to the denomination HYDRA BRONZ, which is non used. Consequently, the only aim of the filing by L’OREAL of the CTM HYDRA BRONZER was to prevent GUINOT from using the denomination HYDRA BRONZ.  

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