Case T‑321/10

SA.PAR. Srl

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community trade mark — Invalidity proceedings — Community word mark GRUPPO SALINI — Bad faith — Article 52(1)(b) of Regulation (EC) No 207/2009)

Summary — Judgment of the General Court (Sixth Chamber), 11 July 2013

1.      Community trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Applicant in bad faith at the time of lodging the trade mark application — Criteria for assessment — Taking account of all the relevant factors existing at the time of filing the application for registration — Applicant’s knowledge that a third party is using an identical or similar sign — Intention of the applicant — Degree of legal protection of the signs at issue — Commercial logic underlying the registration of the sign contested as a Community trade mark — Chronology of events characterising the filing of the trade mark application — Extent of reputation

(Council Regulation No 207/2009, Art. 52(1)(b))

2.      Community trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Applicant in bad faith at the time of lodging the trade mark application — Word mark GRUPPO SALINI

(Council Regulation No 207/2009, Art. 52(1)(b))

3.      Community trade mark — Procedural provisions — Statement of reasons for decisions — Aim

(Art. 296 TFEU; Council Regulation No 207/2009, Art. 75, first sentence)

1.      Under Article 52(1)(b) of Regulation No 207/2009 on the Community trade mark, following an application to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) or on the basis of a counterclaim in infringement proceedings, a Community trade mark is to be declared invalid where the applicant was acting in bad faith when it filed the application for the trade mark. Where the applicant for a declaration of invalidity seeks to rely on that ground, it is for that party to prove the circumstances which substantiate a finding that the Community trade mark proprietor was acting in bad faith when it filed the application for registration of that mark.

In order to determine whether the applicant is acting in bad faith within the meaning of that provision it is necessary to take into consideration all the relevant factors specific to the particular case which pertained at the time of filing the application for registration of the sign as a Community trade mark and, 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.

That being so, the factors set out are only examples drawn from a number of factors which can be taken into account in order to decide whether the applicant for registration was acting in bad faith at the time of filing the trade mark application. It must therefore be held 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 commercial logic underlying the filing of the application for registration of the sign as a Community trade mark, and the chronology of events relating to the filing.

For the purposes of determining whether the trade mark applicant was acting in bad faith, consideration may lastly be given to the extent of the reputation enjoyed by a sign at the time when the application for its registration was filed, since the extent of that reputation might justify the applicant’s interest in ensuring a wider legal protection for its sign.

In order to assess whether or not a trade mark applicant acted in bad faith, it is necessary to examine the intentions of the applicant such as they may be inferred from objective circumstances and from his specific actions, from his role or position, from the awareness he possessed of the use of the earlier sign, from the contractual, pre-contractual or post-contractual relationship he had with the applicant for a declaration of invalidity, from the existence of reciprocal duties or obligations, including the duties of loyalty and integrity arising because he occupies, or has occupied, a position in the executive body of the company or has exercised, or still exercises, management functions within the company of the applicant for a declaration of invalidity, and, more generally, from all the objective situations of conflicting interests in which the trade mark applicant has operated.

(see paras 18, 21-23, 28, 33)

2.      See the text of the decision.

(see paras 26-35, 45)

3.      See the text of the decision.

(see para. 41)