Qingdao Ecopure Filter Co. Ltd v European Union Intellectual Property Office (T-541/25)

JUDGMENT OF THE GENERAL COURT (Fifth Chamber)

21 October 2026 (*)

( EU trade mark – Invalidity proceedings – EU word mark Waterdrop – Absolute ground for invalidity – Bad faith – Article 59(1)(b) of Regulation (EU) 2017/1001 – Article 94(1) and Article 95(1) of Regulation 2017/1001 – Evidence submitted for the first time before the General Court )

In Case T‑541/25,

Qingdao Ecopure Filter Co. Ltd, established in Qingdao (China), represented by O. Günzel, A. Wenninger-Lenz and M. Felis, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by D. Stoyanova-Valchanova, D. Hanf and V. Ruzek, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Waterdrop Microdrink GmbH, established in Vienna (Austria), represented by R. Böhm and A. Ebert-Weidenfeller, lawyers,

THE GENERAL COURT (Fifth Chamber),

composed of M. Sampol Pucurull, President, J. Laitenberger and W. Valasidis (Rapporteur), Judges,

Registrar: G. Mitrev, Administrator,

having regard to the written part of the procedure,

further to the hearing on 10 June 2026,

gives the following

Judgment

1        By its action under Article 263 TFEU, the applicant, Qingdao Ecopure Filter Co. Ltd, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 22 May 2025 (Case R 1696/2024‑4) (‘the contested decision’).

 Background to the dispute

2        On 15 June 2021, the applicant’s predecessor in title filed an application for registration of an EU trade mark with EUIPO in respect of the word sign Waterdrop, which was registered on 29 December 2021 under number 18 492 910 (‘the contested mark’).

3        On 9 February 2023, the intervener, Waterdrop Microdrink GmbH, filed an application with EUIPO for a declaration of invalidity of that mark. The ground relied on in support of the application for a declaration of invalidity was that set out in Article 59(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).

4        The goods covered by the contested mark in respect of which a declaration of invalidity was sought were in Class 11 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and corresponded, inter alia, to the following description: ‘Antimicrobial water purification units; apparatus for filtering drinking water; countertop water filters, namely, water canisters sold empty; portable apparatus for filtering drinking water; refrigerated beverage dispensing units in the nature of water dispensers containing filtration units; water filters for faucets; water filters in the form of a straw; water filters in the nature of water purifiers; water filtration bottles sold empty; water filtration equipment with pitcher; water treatment equipment, namely, reverse osmosis filtration units; aquarium filtration apparatus; filters and filtering devices for air and gas conditioning; filters sold in combination for use in hot tubs; water filtration and purification units and replacement cartridges and filters therefor for refrigerators; water filter installed on the water pipe in front of the water inlet of the washing machine; water treatment equipment, namely, cartridge filtration units; filters sold in combination for use in swimming pools; household air cleaner; water filtration and purification units and replacement cartridges and filters therefor for ice makers’.

5        The applicant’s predecessor in title was also the proprietor of other EU trade marks, including the following:

–        figurative mark Waterdrop No 14 739 379 (‘the earlier mark’), filed on 28 October 2015 and registered on 19 February 2016 in respect of goods in Class 11 corresponding to the following description: ‘Water filters; air filtering installations’, as reproduced below:

–        word mark Waterdrop No 18 242 979, filed on 22 May 2020 and registered on 5 November 2020 in respect of goods in Class 11 corresponding, inter alia, to the following description: ‘Apparatus for water supply’.

6        On 13 January 2022, the applicant’s predecessor in title transferred the earlier mark, the contested mark, and mark No 18 242 979 to the applicant.

7        In addition, on 19 January, 25 May, 30 May, 10 August and 29 September 2022 respectively, the applicant filed notices of opposition to the applications for registration of the intervener’s following WATERDROP marks:

–        EU trade mark No 18 561 136 in respect of goods in, inter alia, Class 11, on the basis of previously registered mark No 18 492 340;

–        French trade mark No 4848824 in respect of goods in Class 7, on the basis of the contested mark;

–        Spanish trade mark No 4160084 in respect of goods in Class 11, on the basis, inter alia, of the contested mark and the earlier mark;

–        German trade mark No 3020221030799 in respect of goods in Class 7, on the basis of the contested mark;

–        Czech trade mark No 577 862 in respect of goods in, inter alia, Class 11, on the basis, inter alia, of the contested mark.

8        On 11 November 2022, the applicant filed an application for registration of the word sign waterdrop as an EU trade mark, under No 18 792 777, in respect of goods in, inter alia, Class 11.

9        On 27 June 2024, the Cancellation Division rejected the application for a declaration of invalidity in respect of all the goods covered by the contested mark.

10      On 27 August 2024, the intervener filed a notice of appeal with EUIPO against the Cancellation Division’s decision.

11      By the contested decision, the Board of Appeal annulled the decision of the Cancellation Division in part and declared the contested mark invalid in respect of some of the goods in Class 11, as referred to in paragraph 4 above. In particular, the Board of Appeal found that, in respect of the goods covered by the contested mark which were identical to those covered by the earlier mark, the application for registration of the contested mark had been filed in bad faith, on the ground, in essence, that that application constituted a re-filing of the earlier mark with the intention of circumventing the obligation to prove genuine use. As regards the rest of the goods covered by the contested mark, the Board of Appeal dismissed the appeal, finding that bad faith had not been established.

 Forms of order sought

12      The applicant contends that the Court should:

–        annul the contested decision;

–        reject the application for a declaration of invalidity of the contested mark in its entirety;

–        order EUIPO and the intervener to pay the costs, including those incurred before the Board of Appeal.

13      At the hearing, the applicant declared that it was withdrawing its second head of claim, formal note of which was taken in the minutes of the hearing.

14      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs in the event that a hearing is convened.

15      The intervener contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

 Admissibility of evidence and arguments submitted for the first time before the Court

16      EUIPO and the intervener argue that the applicant submitted certain items of evidence for the first time before the Court and that, for that reason, they are inadmissible. According to EUIPO, the evidence in question is that in Annexes A.6 to A.9 to the application, whereas the intervener refers to Annexes A.6 to A.10 to the application.

17      Annexes A.6 to A.9 to the application contain, respectively, a blog post entitled ‘Qingdao Ecopure Filter Co., Ltd. At Aquatech Amsterdam 2023’, a report entitled ‘FORTUNE BUSINESS INSIGHTS Water & Sludge Treatment, Water Purifier Market Size, Share & Industry Analysis, Report’, screenshots from the website of the Aquatech Amsterdam trade fair ‘www.aquatechtrade.com’, and copies of screenshots of products on the applicant’s website ‘www.ecpwaterfilter.com’, intended to demonstrate the alleged rapid development of the market for water filters involving the launch of innovative products. Annex A.10 consists of the Cancellation Division’s decision of 7 March 2025 adopted at the end of revocation proceedings No C 58 608 concerning the earlier mark, submitted by the applicant in order to demonstrate genuine use of that mark in respect of ‘Water filters’ in Class 11.

18      In that regard, it should be borne in mind that the purpose of bringing actions before the Court is to review the legality of the decisions of the Boards of Appeal of EUIPO for the purposes of Article 72 of Regulation 2017/1001 and that, in proceedings for annulment, the legality of the contested measure must be assessed on the basis of the elements of fact and of law existing at the time when the measure was adopted. Therefore, it is not the Court’s function to re-evaluate the factual circumstances in the light of evidence adduced for the first time before it (see judgment of 21 February 2024, Dendiki v EUIPO – D-Market (hepsiburada), T‑172/23, not published, EU:T:2024:105, paragraph 15 and the case-law cited). In addition, to admit such evidence would be contrary to Article 188 of the Rules of Procedure of the General Court, according to which the parties’ submissions may not alter the subject matter of the proceedings before the Board of Appeal (see judgment of 22 January 2025, Tes Electrical Electronic v EUIPO – Tes Touch Embedded Solutions (Xiamen) (TES), T‑517/23, not published, EU:T:2025:48, paragraph 14 and the case-law cited).

19      In the present case, it is apparent from an examination of the file, and it was confirmed at the hearing, that the applicant submitted Annexes A.6 to A.10 to the application for the first time before the Court.

20      Therefore, Annexes A.6 to A.10 to the application must be rejected as inadmissible.

21      Consequently, the applicant’s arguments in paragraphs 19 and 20 of the application will not be examined, as they are based on inadmissible evidence.

 Substance

22      The applicant relies on three pleas in law, the first alleging infringement of Article 59(1)(b) of Regulation 2017/1001, the second alleging infringement of Article 95(1) of that regulation and the third alleging infringement of Article 94(1) thereof.

 The first plea in law, alleging infringement of Article 59(1)(b) of Regulation 2017/1001

23      By the first plea, the applicant disputes the Board of Appeal’s assessment that the application for registration of the contested mark was filed in bad faith in respect of the goods referred to in paragraph 4 above. That plea is divided, in essence, into five parts, alleging, respectively, that:

–        there was no overall assessment of bad faith;

–        there was no re-filing of a mark identical to the earlier mark;

–        the Board of Appeal disregarded the applicant’s honest commercial logic consisting in filing a modernised version of the earlier mark for an updated list of goods;

–        no account was taken of the fact that the applicant had already used the earlier mark in respect of goods covered also by the contested mark;

–        the Board of Appeal erred in finding that the oppositions filed by the applicant against the intervener’s trade marks were indicative of bad faith.

24      EUIPO and the intervener dispute the applicant’s arguments.

25      As a preliminary point, it should be borne in mind that, under Article 59(1)(b) of Regulation 2017/1001, an EU trade mark is to be declared invalid on application to EUIPO or on the basis of a counterclaim in infringement proceedings where the applicant was acting in bad faith when he or she filed the application for the trade mark.

26      In that regard, it should be noted that the concept of ‘bad faith’ set out in Article 59(1)(b) of Regulation 2017/1001 is not defined by that regulation. The meaning and scope of that concept must therefore be determined by considering its usual meaning in everyday language, whilst also taking into account the context in which it occurs and the objectives pursued by that regulation (see judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 43 and the case-law cited).

27      While, in accordance with its usual meaning in everyday language, the concept of ‘bad faith’ presupposes the presence of a dishonest state of mind or intention, that concept must also be understood in the context of trade mark law, which is that of the course of trade. In that regard, it should be noted that the rules on the EU trade mark, defined by Regulation 2017/1001, are aimed, in particular, at contributing to the system of undistorted competition in the European Union, in which each undertaking must, in order to attract and retain customers by the quality of its goods or services, be able to have registered as trade marks signs which enable the consumer, without any possibility of confusion, to distinguish those goods or services from others which have a different origin (see judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 45 and the case-law cited).

28      Consequently, the absolute ground for invalidity referred to in Article 59(1)(b) of Regulation 2017/1001 applies where it is apparent from relevant and consistent indicia that the proprietor of an EU trade mark has filed the application for registration of that mark not with the aim of engaging fairly in competition but with the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties, or with the intention of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark, in particular the essential function of indicating origin (judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 46).

29      The intention of an applicant for a trade mark, which must, in accordance with the provisions of Article 59(1)(b) of Regulation 2017/1001, be assessed when the application for the trade mark is filed, is a subjective factor which must, however, be determined objectively by the competent administrative or judicial authorities. Consequently, any claim of bad faith must be the subject of an overall assessment, taking into account all the factual circumstances relevant to the particular case (see judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 47 and the case-law cited).

30      To that end, it is appropriate to take into consideration, in particular, first, 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 or service capable of being confused with the sign for which registration is sought, secondly, the applicant’s intention to prevent that third party from continuing to use such a sign and, thirdly, 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).

31      Moreover, in the context of the overall analysis undertaken pursuant to Article 59(1)(b) of Regulation 2017/1001, account may be taken, inter alia, of the origin of the contested 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 judgments of 21 April 2021, Hasbro v EUIPO – Kreativni Dogadaji (MONOPOLY), T‑663/19, EU:T:2021:211, paragraph 38 and the case-law cited, and of 6 July 2022, Zdút v EUIPO – Nehera and Others (nehera), T‑250/21, EU:T:2022:430, paragraph 30 and the case-law cited).

32      Furthermore, it is for the applicant for a declaration of invalidity who intends to rely on Article 59(1)(b) of Regulation 2017/1001 to prove the circumstances which make it possible to conclude that an application for registration of an EU trade mark was filed in bad faith, the good faith of the trade mark applicant being presumed until proven otherwise (see judgment of 21 April 2021, MONOPOLY, T‑663/19, EU:T:2021:211, paragraph 42 and the case-law cited). However, where EUIPO finds that the objective circumstances of the particular case relied on by the applicant for a declaration of invalidity may lead to the rebuttal of the presumption of good faith applying to the application for registration of the mark at issue, it is for the proprietor thereof to provide explanations on his or her intentions at the time of applying for registration of that mark, in order to convince EUIPO that those intentions were legitimate (judgment of 23 May 2019, Holzer y Cia v EUIPO – Annco (ANN TAYLOR and AT ANN TAYLOR), T‑3/18 and T‑4/18, EU:T:2019:357, paragraphs 36 and 37).

33      It is in the light of the foregoing considerations that the applicant’s various arguments raised in the context of the first plea must be examined.

–       The first part of the first plea, alleging that there was no overall assessment of bad faith

34      The applicant complains, in essence, that the Board of Appeal did not carry out an overall assessment of all the relevant evidence of the case in order to determine whether bad faith was established at the time of filing the contested mark. In the applicant’s view, the Board of Appeal was incorrect to focus on a single aspect, namely the procedural advantage of not having to prove genuine use of the earlier mark which had been re-filed, and failed to take into consideration a number of other valid reasons put forward by the applicant to justify its trade mark filing strategy, in particular, that of ensuring protection for goods not covered by its earlier rights.

35      EUIPO and the intervener dispute the applicant’s arguments.

36      In the first place, it is necessary to bear in mind the evidence which led the Board of Appeal to consider that the re-filing of the earlier mark was indicative of the applicant’s bad faith.

37      First, in paragraphs 51 and 52 of the contested decision, the Board of Appeal took account of the chronology of events which led to the filing of the contested mark on 15 June 2021 and subsequent events capable of shedding light on its intentions at the time of filing. The Board of Appeal found that the contested mark had been filed only four months after the expiry of the grace period for the almost identical earlier mark, which had ended on 19 February 2021. Additionally, it noted that the applicant, or its predecessor in title, had filed at least four applications for marks composed of the word element ‘waterdrop’ (see paragraphs 2, 5 and 8 above) over a relatively short period of three years, covering goods, inter alia, in Class 11.

38      Secondly, in paragraphs 53, 54 and 56 of the contested decision, the Board of Appeal found that the contested goods referred to in paragraph 4 above were already encompassed by the broad terms for the goods covered by the earlier mark and, therefore, that they were identical.

39      Thirdly, according to the Board of Appeal, that pattern of repeated trade mark applications within a relatively short time frame with the inclusion of goods already covered by the earlier mark was not accompanied by a clear commercial justification. In paragraphs 57 and 58 of the contested decision, the Board of Appeal stated, in that regard, that the applicant had not proved that there had been any expansion of its business activities, much less any rapid market developments in the light of the specific sector in question, which, the Board of Appeal claimed, was not ‘particularly dynamic or innovation-driven’. Those factors did not justify frequent adjustments or updates to the list of contested goods in response to market realities. In addition, in paragraphs 59 and 60 of that decision, the Board of Appeal noted that the evidence submitted by the applicant did not indicate that the contested mark had been used for different goods, but for the same product range.

40      Fourthly, in paragraphs 61 to 64 of the contested decision, the Board of Appeal rejected the applicant’s claim that its strategy of consolidating its goods under a single updated registration ‘served practical and cost-effective considerations’, such as a reduced administrative burden, finding that no evidence had been provided in that regard.

41      Fifthly, in paragraphs 65 to 69 and 75 of the contested decision, as regards efforts to register the intervener’s WATERDROP marks in the Czech Republic, in Germany, in Spain, in France and in the European Union, the Board of Appeal noted that the only opposition proceedings in which the applicant had relied on, inter alia, the earlier mark were those brought in Spain. The Board of Appeal observed that in its oppositions against the intervener’s trade mark applications in the Czech Republic, in Spain and in the European Union, the applicant had relied on the contested mark and other earlier rights rather than on the earlier mark, even though the marks applied for by the intervener covered, in part, goods in Class 11, identical to those covered by the earlier mark. The applicant therefore derived an advantage from its re-filing by avoiding the obligation to prove use of the earlier mark in the context of those opposition proceedings. The Board of Appeal nevertheless considered it logical for the applicant to rely on an earlier right other than the earlier mark in the context of opposition proceedings in Germany and in France, since the goods at issue were in Class 7, and not in Class 11.

42      Taking all those circumstances into account, the Board of Appeal found, in paragraphs 70 to 73 of the contested decision, that the applicant’s conduct, consisting in using the contested mark in order to block the intervener’s registration efforts, for goods which are strictly identical to those of its earlier mark, had to be regarded as incompatible with the objectives pursued by Regulation 2017/1001. Moreover, the Board of Appeal concluded, in paragraphs 74 and 76 of the contested decision, that the applicant’s intention was indeed to take advantage of the rules of EU trade mark law by artificially creating a situation in which it would not have to prove genuine use of the earlier mark for the goods covered by the contested mark.

43      Therefore, it must be held that, in the light of the factors referred to in paragraphs 37 to 42 above, it cannot be validly maintained that the Board of Appeal focused solely on the procedural advantage of not having to prove genuine use of the mark in respect of which the application had been re-filed. In order to determine whether bad faith had been established, the Board of Appeal took into account several factors including, inter alia, the chronology of events which led to the filing of the contested mark, the fact that the marks at issue were almost identical and covered the same goods, as well as the reasons put forward by the applicant to justify its trade mark filing strategy, such as portfolio consolidation, and practicability or adaptation to market realities.

44      In the second place, the applicant submits that the Board of Appeal incorrectly applied to the present case paragraph 70 of the judgment of 21 April 2021, MONOPOLY (T‑663/19, EU:T:2021:211), according to which the re-filing of a mark does not, in itself, amount to a filing made in bad faith. It should be noted, in that regard, that it is clear from the Board of Appeal’s reasoning, as summarised in paragraphs 37 to 42 above, that it was not the re-filing of an EU trade mark in itself which was found to be indicative of bad faith on the part of the applicant. By contrast, the Board of Appeal, after having examined the information in the case file as a whole, in the light of the case-law cited in paragraph 31 above, concluded that it demonstrated that the applicant had intentionally sought to circumvent a fundamental rule of EU trade mark law, namely that relating to proof of use, in order to derive an advantage therefrom to the detriment of the balance of the EU trade mark system established by the EU legislature. Consequently, that argument put forward by the applicant must be rejected.

45      In addition, it must be emphasised that, in paragraph 77 of the contested decision, the Board of Appeal specifically set out the reasons why the solution adopted by the Court in the judgment of 21 April 2021, MONOPOLY (T‑663/19, EU:T:2021:211), could be transposed to the present case. The Board of Appeal found that both cases concerned marks covering the same goods and that in both cases the proprietor of the contested mark had filed at least two oppositions based on marks other than the earlier mark and had admitted to filing trade mark applications covering identical goods for practical reasons. It should be noted that the applicant merely submits that, unlike in the case that gave rise to the judgment of 21 April 2021, MONOPOLY (T‑663/19, EU:T:2021:211), in the present case the filing of the contested mark is justified by a number of legitimate reasons, in accordance with its essential function of indicating origin, but does not provide any further explanation as to differences between the facts of the dispute that gave rise to the abovementioned judgment and the situation at issue in the present dispute.

46      In those circumstances, contrary to the applicant’s submission, it must be held that the Board of Appeal carried out an overall assessment of all the relevant factors to establish bad faith, taking into account the reasons which the applicant had put forward to justify its trade mark filing strategy.

47      In the light of the foregoing considerations, the first part of the first plea must be rejected.

–       The second part of the first plea, alleging that there was no re-filing of a mark identical to the earlier mark

48      The Board of Appeal considered that the earlier mark and the contested mark were almost identical. In that regard, it stated that the earlier mark, although registered as a figurative mark, consisted solely of the identical word element ‘waterdrop’, rendered in ‘a standard, non-stylised typeface’, and that it was therefore indistinguishable from the contested mark.

49      In its written pleadings, the applicant submits that the filing of the contested mark did not constitute a new filing of the earlier mark, since those marks are not identical. In addition, relying on the judgment of 13 December 2012, pelicantravel.com v OHIM – Pelikan (Pelikan) (T‑136/11, not published, EU:T:2012:689), the applicant claims that the application for registration of the contested mark was justified by a commercially sensible practice. It asserts that its intention to protect the contested mark was motivated by the fact that a word mark is more flexible when it comes to modernisation than a figurative mark covering an updated list of goods. The applicant adds that it sought protection of a word mark in order to avoid an examination of the use of the mark in a form other than that in which the earlier mark was registered.

50      EUIPO and the intervener dispute the applicant’s arguments.

51      It must be borne in mind that, according to the case-law, a sign is identical with a trade mark only where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences which are so insignificant that they may go unnoticed by an average consumer (judgments of 20 March 2003, LTJ Diffusion, C‑291/00, EU:C:2003:169, paragraph 54, and of 19 January 2012, Shang v OHIM (justing), T‑103/11, EU:T:2012:19, paragraph 16).

52      In the present case, it should be noted, first, that the marks at issue consist solely of the identical word element ‘waterdrop’. Secondly, the standard typeface in which the earlier mark is rendered is not stylised, as the Board of Appeal noted, and it is therefore insignificant to the point of going unnoticed by the average consumer.

53      Furthermore, as the applicant acknowledged at the hearing, the contested mark and the earlier mark may be regarded as almost identical.

54      In those circumstances, there is no need to call into question the Board of Appeal’s finding that the marks at issue are almost identical.

55      Furthermore, it should be noted that the argument put forward by the applicant to justify its commercial practice, namely that of protecting a word mark which is more flexible in respect of modernisation than a figurative mark, was raised for the first time before the Court. That argument must therefore be rejected as inadmissible.

56      In any event, unlike in the case that gave rise to the judgment of 13 December 2012, Pelikan (T‑136/11, not published, EU:T:2012:689), relied on by the applicant, in which the contested mark PELIKAN differed from earlier marks due to the evolution of the company’s logo reflecting an intention to modernise that mark, in the present case, the applicant merely claimed that its intention was to file a modernised mark, covering an updated list of goods, without substantiating that assertion.

57      Lastly, as regards the argument put forward by the applicant relating to its intention to protect a word mark in order to avoid an examination of the use of the mark in a form other than that in which the earlier mark was registered, it must be held that that argument is irrelevant in the context of the present dispute and must be rejected as ineffective.

58      Consequently, the second part of the first plea must be rejected.

–       The third part of the first plea, alleging that the Board of Appeal disregarded the applicant’s honest commercial logic consisting in filing a modernised version of the earlier mark for an updated list of goods

59      The applicant complains that the Board of Appeal, as regards the list of goods being updated to reflect market reality, failed to take into account the fact that the contested mark covered not only the goods protected by the earlier mark, but also other goods.

60      The applicant submits that registering the contested mark for specific goods, instead of claiming protection only for broad categories of goods, is not indicative of bad faith, but constitutes an honest commercial practice intended to contribute to clarity and legal certainty. It claims that that practice, inter alia, provides certainty that the goods are actually covered by its mark and removes any doubt as to their inclusion within broad categories.

61      The applicant submits that registering a single mark covering its entire range of products allows protection to be claimed for goods not covered by the earlier mark, and at the same time offers a procedural advantage and reduces administrative costs. Accordingly, it claims that any opposition proceedings would not entail increased costs because they would have only one trade mark as basis instead of many. The applicant also states that EUIPO itself restricts its examination of the opposition to one earlier mark for reasons of procedural economy.

62      EUIPO and the intervener dispute the applicant’s arguments.

63      According to settled case-law, it must be borne in mind that where the goods covered by the trade mark application are included in a more general category of goods covered by the earlier mark, those goods may be considered to be identical (see, to that effect and by analogy, judgment of 21 February 2024, Azalee Cosmetics v EUIPO – L’Oréal (UK) (LA CREME LIBRE), T‑765/22, not published, EU:T:2024:106, paragraph 33 and the case-law cited).

64      In the present case, as the Board of Appeal observed, it must be held that the goods covered by the contested mark, in Class 11, listed in paragraph 4 above, must be regarded as falling within the broader categories of ‘water filters’ and ‘air filtering installations’, also in Class 11, covered by the earlier mark (see paragraph 5 above). That also applies to the ‘refrigerated beverage dispensing units in the nature of water dispensers containing filtration units’ covered by the contested mark, which the applicant contends are not included in the category of water filters.

65      Consequently, the Board of Appeal was correct in concluding that the goods referred to in paragraph 4 above, covered by the contested mark, and those covered by the earlier mark were identical.

66      Furthermore, contrary to the applicant’s contention, it is clear from paragraphs 54, 55, 80 and 81 of the contested decision that the Board of Appeal took into account the fact that the contested mark designated both goods which were already covered by the earlier mark and goods which were not related to filtration and therefore did not come under the broad terms of the goods covered by the earlier mark. For that reason and in accordance with the case-law cited in paragraph 30 above, the Board of Appeal rejected the application for a declaration of invalidity in respect of the goods covered by the contested mark which were different from those covered by the earlier mark, on the ground that bad faith had not been proved.

67      As regards the line of argument referred to in paragraph 60 above, it should be noted that it was put forward for the first time before the Court, with the result that the Court is not in a position to rely on evidence which has already been assessed by the Board of Appeal. To that extent, the applicant’s argument that the list of specific goods covered by the contested mark ensures the clarity and legal certainty of the registration must be rejected as inadmissible.

68      As regards the applicant’s argument that the update to the list of goods reflected market reality, it should be noted, as the Board of Appeal observed in paragraph 57 of the contested decision, that no expansion of the applicant’s business activities or growth of its business can be established in relation to the goods covered by the contested mark which are already covered by the earlier mark. Unlike the circumstances of the case that gave rise to the judgment of 13 December 2012, Pelikan (T‑136/11, not published, EU:T:2012:689), the applicant has not proved that the new filing was part of its commercial expansion plan.

69      Furthermore, there is nothing in the file that is capable of calling into question the Board of Appeal’s assessment, set out in paragraph 58 of the contested decision, that the contested goods did not belong to a particularly dynamic sector justifying frequent adjustments or updates to the list of those goods better to reflect rapid market developments.

70      The applicant’s argument concerning its intention to consolidate an updated list of goods under a single modernised mark, thereby gaining a procedural advantage by being able to save on multiple renewals in respect of each mark, must also be rejected. It must be noted, as the Board of Appeal observed, that the administrative burden on the applicant could not be reduced by re-filing a mark identical to the previously registered marks, since, first, the applicant filed new applications for the registration of trade marks for the sign Waterdrop, in respect of which it paid filing fees. Secondly, it is not apparent from either the case file or the hearing that the applicant has surrendered any of its marks containing the word element ‘waterdrop’. Thus, none of the evidence submitted by the applicant demonstrates that its filing strategy for the contested mark consisted, inter alia, in consolidating all the goods concerned under a single mark.

71      Furthermore, as regards the applicant’s claim that the re-filing of the mark was intended to facilitate opposition proceedings by allowing it to rely on a single trade mark, it should be noted that, as the Board of Appeal correctly pointed out in paragraph 63 of the contested decision, the main procedural advantage that is plausible in such circumstances would be that of benefiting from a new grace period arising from the new filing. Accordingly, that contention must be rejected.

72      Lastly, although the applicant submits that EUIPO itself restricts the examination of oppositions to a single earlier mark for reasons of procedural economy, it should be noted, as the intervener submits, that that internal practice applied by EUIPO cannot justify the re-filing by a proprietor of a mark identical to the earlier mark. That argument must therefore be rejected as ineffective.

73      Consequently, the applicant’s claims that the filing of the contested mark was justified by practicability and cost-effectiveness must be rejected.

74      In the light of the foregoing considerations, the applicant has not established that the Board of Appeal disregarded its honest commercial logic consisting in filing a modernised version of the earlier mark for an updated list of goods.

75      The third part of the first plea must therefore be rejected as unfounded.

–       The fourth part of the first plea, alleging that no account was taken of the fact that the applicant had already used the earlier mark in respect of goods covered also by the contested mark

76      The applicant submits that the Board of Appeal did not attach any importance to the fact that, by filing the contested mark, the applicant claimed protection for goods covered also by the earlier mark, which were already put to genuine use at the time of filing the application. It maintains that the contested mark had already been put to use at the time of filing in respect of goods which overlapped with those covered by the earlier mark.

77      EUIPO and the intervener dispute the applicant’s arguments.

78      In that regard, in accordance with the case-law set out in paragraphs 26 to 31 above, it is sufficient to note that whether or not the applicant could have actually proved genuine use of the earlier mark is irrelevant, as it is the intention of the applicant for a mark which is to be evaluated in the present dispute (judgment of 21 April 2021, MONOPOLY, T‑663/19, EU:T:2021:211, paragraph 82).

79      It follows that the fourth part of the first plea must be rejected as ineffective.

–       The fifth part of the first plea, alleging that the Board of Appeal erred in finding that the oppositions filed by the applicant against the intervener’s trade marks were indicative of bad faith

80      The applicant claims that the Board of Appeal erred in finding that the oppositions it had brought against the intervener’s applications for the WATERDROP marks, in particular in Spain, constituted a circumstance indicative of bad faith. That conclusion is based on the assumption that the applicant could withdraw the ground of opposition based on the earlier mark in Spain. The applicant also disputes the Board of Appeal’s finding that the contested mark was used in order to block the intervener’s registration efforts, as ‘a way of obstructing competition’. Furthermore, the applicant complains that the Board of Appeal criticised its oppositions based on the contested mark in the Czech Republic, in Spain and in the European Union, while it raised no objection to the oppositions it had filed on the basis of the contested mark in Germany and in France.

81      EUIPO and the intervener dispute the applicant’s arguments.

82      First, it should be noted that the Board of Appeal carried out an assessment of the applicant’s practices and relied on specific facts, namely (i) that at least two opposition proceedings brought by the applicant against the intervener’s WATERDROP marks were based on the contested mark and therefore benefited from a new grace period and (ii) that the applicant had relied on the earlier mark only in the opposition proceedings brought in Spain (see paragraph 41 above). In those circumstances, the Board of Appeal correctly concluded that the applicant was able to derive a procedural advantage from its practices, by having avoided the need to prove use of the earlier mark covering identical goods. Therefore, the line of argument concerning the Board of Appeal’s alleged assumptions cannot succeed.

83      Secondly, it should be noted that the fact that four applications for registration of the intervener’s national WATERDROP marks, namely in the Czech Republic, in Germany, in Spain and in France, were the subject of opposition proceedings on the basis of the contested mark does not support a finding of honest use of that mark by the applicant. Rather, it appears that the applicant attempted to prevent the intervener from registering its signs in respect of identical goods. Therefore, contrary to the applicant’s contentions, it cannot be ruled out that the use of the contested mark was not intended for the purpose of engaging fairly in competition, but instead to undermine the intervener’s economic activities.

84      Thirdly, it must be noted that the applicant cannot complain that the Board of Appeal criticised the oppositions it had brought on the basis of the contested mark or other earlier rights in the Czech Republic, in Spain and in the European Union, given that the applications for the intervener’s WATERDROP marks related, inter alia, to goods in Class 11 which coincided with goods covered by the earlier mark. The Board of Appeal therefore correctly noted, in paragraph 68 of the contested decision, that such oppositions, based on marks other than the earlier mark which covered goods in Class 11, were, in essence, indicative of abusive conduct. On the contrary, as the Board of Appeal observed, the Court notes that it was logical for the applicant to rely on an earlier right other than the earlier mark in the opposition proceedings brought in France and in Germany. Those applications for the intervener’s marks concerned goods in Class 7 which were unrelated to the goods in Class 11 covered by the earlier mark. Therefore, the applicant’s arguments are based on a misreading of the contested decision.

85      As a result, the fifth part of the first plea must be rejected as unfounded.

86      In the light of the foregoing considerations, the Board of Appeal did not make an error of assessment in finding that the re-filing of the contested mark had been made in bad faith, in breach of Article 59(1)(b) of Regulation 2017/1001. It follows that the first plea in law must be rejected.

 The second plea in law, alleging infringement of Article 95(1) of Regulation 2017/1001

87      The applicant claims that the Board of Appeal infringed Article 95(1) of Regulation 2017/1001 by asserting on its own initiative that the water filters sector does not appear to be ‘particularly dynamic or innovation-driven’, although no such allegation has been made by the parties nor does it constitute a well-known fact. The applicant is also of the view that the Board of Appeal failed to observe the principle that the burden of proof lies with the applicant for a declaration of invalidity.

88      EUIPO and the intervener dispute the applicant’s arguments.

89      In the first place, it must be stated that the Board of Appeal’s finding that the water filters sector is not ‘particularly dynamic or innovation-driven’ – unlike the information technology or artificial intelligence sector – forms part of the assessment of the expansion of the specific market in question and of the applicant’s commercial activities, alleged by the applicant. In those circumstances, the Board of Appeal noted that the applicant had not submitted any evidence – such as evidence of ‘new product launches, investments in production, or expansion of commercial activities’ – to show that it had expanded its range of products in response to an evolving market. Therefore, the applicant is not justified in criticising the Board of Appeal for having taken into account the parties’ failure to submit new evidence.

90      In the second place, the line of argument alleging an unlawful reversal of the burden of proof on the applicant cannot succeed. The Board of Appeal did not unlawfully reverse the burden of proof, but considered that it was apparent from the relevant objective circumstances identified by EUIPO that the applicant had filed the application for registration of the contested mark for a purpose other than that of engaging in fair competition, a finding which is confirmed by the examination of the first plea. In order to reach that conclusion, as is apparent from paragraphs 37 to 42 above, the Board of Appeal took account of objective circumstances, in particular that the signs at issue are almost identical and that some of the goods covered by the earlier mark and the contested mark are identical, as well as the chronology of events, inasmuch as the applicant had filed the application for the contested mark only four months after the end of the grace period for the earlier mark, which was liable to be revoked for non-use.

91      Thus, since the presumption of good faith is itself rebutted, it was indeed for the Board of Appeal to draw the appropriate conclusions and for the applicant, in accordance with the case-law cited in paragraph 32 above, to prove its good faith, by establishing, for example, its honest commercial logic, which it failed to do.

92      It follows that the applicant has not established that the Board of Appeal erred in the application of Article 95(1) of Regulation 2017/1001. The second plea in law must therefore be rejected.

 The third plea in law, alleging infringement of Article 94(1) of Regulation 2017/1001

93      The applicant complains that the Board of Appeal infringed its right to a fair hearing on the ground that the Board of Appeal did not give it the opportunity to comment on the assertion that the water filters sector does not appear to be ‘particularly dynamic or innovation-driven’.

94      EUIPO and the intervener dispute the applicant’s arguments.

95      In that regard, it should be borne in mind that, according to Article 94 of Regulation 2017/1001, decisions of EUIPO are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. That provision constitutes a specific application of the general principle of protection of the rights of the defence, guaranteed, furthermore, by Article 41(2)(a) of the Charter of Fundamental Rights of the European Union, according to which a person whose interests are affected by a decision of a public authority must be given the opportunity effectively to make his or her point of view known (see judgment of 21 April 2021, MONOPOLY, T‑663/19, EU:T:2021:211, paragraph 119 and the case-law cited).

96      The right to be heard provided for in Article 94 of Regulation 2017/1001 extends to all the factual and legal material which forms the basis for the decision, but not to the final position which the authority intends to adopt. That right does not require that, before taking a final position on the assessment of the evidence submitted by a party, the Board of Appeal of EUIPO must offer that party a further opportunity to comment on that evidence (see judgment of 8 June 2022, Apple v EUIPO – Swatch (THINK DIFFERENT), T‑26/21 to T‑28/21, not published, EU:T:2022:350, paragraph 41 and the case-law cited).

97      In the present case, contrary to the applicant’s arguments, it follows from paragraphs 39, 68, 69 and 89 above that the Board of Appeal did not rely on new facts, but sufficiently explained, in paragraphs 57 and 58 of the contested decision, the reasons why it considered that the expansion of commercial activities and of the specific market in question relied on by the applicant to justify successive filings of marks for an updated list of goods had not been established. The applicant was therefore in a position to understand the reasons why its arguments had been rejected. In that regard, the Board of Appeal’s assertion that the water filters sector is not ‘particularly dynamic or innovation-driven’ forms part of its response to the argument put forward by the applicant, based on the expansion of the specific market in question.

98      In any event, it follows from the case-law that the rights of the defence are infringed by reason of a procedural irregularity only in so far as the irregularity actually has a specific effect on the ability of the undertakings concerned to defend themselves. Accordingly, non-compliance with rules in force whose purpose is to protect the rights of the defence can vitiate the administrative procedure only if it is shown that the latter could have had a different outcome if the rules had been observed (see judgment of 6 November 2024, Société des produits Nestlé v EUIPO – Amigüitos pets & life (THE ONLY ONE by alphaspirit wild and perfect), T‑359/23, not published, EU:T:2024:780, paragraph 41 and the case-law cited). In the present case, the applicant does not put forward any fact or argument capable of demonstrating that, if it had been consulted by the Board of Appeal on certain aspects of the dispute, the administrative procedure might have led to a different outcome.

99      In the light of the foregoing, the third plea in law must be rejected as unfounded.

100    As a result, the action must be dismissed in its entirety.

 Costs

101    Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

102    Since a hearing has taken place and the applicant has been unsuccessful, it must be ordered to pay the costs incurred by EUIPO and by the intervener, in accordance with the forms of order sought by them.

On those grounds,

THE GENERAL COURT (Fifth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Qingdao Ecopure Filter Co. Ltd to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO) and Waterdrop Microdrink GmbH.

Sampol Pucurull

Laitenberger

Valasidis

Delivered in open court in Luxembourg on 21 October 2026.

T. Henze

S. Papasavvas

Acting Registrar

President

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*      Language of the case: English.