Article 19 (2) of the Italian Industrial Property Code states that: “Who filed a trademark application in bad faith cannot obtain the registration”.
In detail, how is it possible to identify a case of bad faith?
The Court of Appeal of Milan (judgment of 9 December 2013, in r.g. 263/2011) states in that regard that “it is established that the filing in bad faith is only that of those who know that they (can) violate the right of another subject, while it is different the filing made by someone who knows the existence of a former trademark, but does not think to violate it for a reasonable reason”.
The awareness of being able to violate the right of others is, therefore, a presupposition and an integral part of the hypothesis of bad faith; this concept has been repeatedly emphasized by the case law. You can see, just of example, the Court of Rome (judgment of 17 February 2016, in r.g. 64105 of 2013), according to which: “It is known that the bad faith in the article 19 of the Italian Industrial Property Code makes reference to the registration in prevarication made by subjects already aware of the content and object of the trademark through manifestly fraudulent ways”.
With regard to the EUTM, bad faith is am absolute ground of invalidity of a trademark. Article 59, 1) lett. b) of the Regulation (EU) 2017/1001 of the European Parliament and of the Council states that: “An EU trademark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings where the applicant was acting in bad faith when he filed the application for trademark”
The same rule was in the Article 51, 1) lett.b) of the previous EU Regulation 40/94, which was interpreted by the Court of Justice in its judgment of 11 June 2009 in Case C-529/07 which clarified that, whether the applicant is acting in bad faith, it is necessary to take into account all the factors relevant in the moment of the filing of the application, particularly:
- “the fact that the applicant knows or must know that a third party is using, in at least one Member State, and identical or similar sign for an identical or similar product capable of being confused with the sign for which registration is sought→ the presumption of knowledge, by the applicant, of the use by a third party of an identical or similar sign for which registration is sought…may arise, inter alia, from a general knowledge in the economic sector concerns of such use, and that knowledge can be inferred, inter alia, from the duration of such use: In fact, the more that use is long-standing, the more probable it is that the applicant will, when filing the application for registration, have knowledge of it. However that presumption is not sufficient, in itself, to permit the conclusion that the applicant was acting in bad faith
- The applicant’s intention to prevent that third party from continuing to use such a sign→the intention to prevent a third party from marketing a product may, in certain circumstances, be n element of bad faith on the part of the applicant; that is in particular the case when it becomes apparent, subsequently, that the applicant applied for registration of a sign as a EUTM without intending to use it, with the sole objective being to prevent a third party from entering the market
- The degree of legal protection enjoyed by the third party’s sign and by the sign for which the registration is sought”