interessante caso deciso da Trib. UE 10.01.2023, T-528/21, Neratax ltd v. EUIPO + altri .
In pratica il successivo retgistrante era d’accordo col primo registrante , il quale era caduto in insolvenza e aveva permesso la registrazione e poi lasciando decadere il proprio diritto.
Agiscono in gudizio, per fare valere la malafede del deposito, alcuni creditori della società insolvente (tipo la ns. surrogatoria ex 2900 cc ?’).
Il Trib. conferma le decisioni amminsitrative e ravvisa mala fede nel deposito.
Ratione temporis applica il reg. 207/2009, art. 51.1.b.
<< 49 In that regard, the Board of Appeal, after setting out the chronology of events, found that it had been shown that the filings of the contested marks were a key part of a coordinated strategy, between the applicant and Krentin, to remove earlier national marks of some value from the assets of Krentin while ensuring that they were registered by means of equivalent EU trade marks covering the same goods. The Board of Appeal took the view that, consequently, the contested marks had been filed with the aim of undermining the interests of third parties and not with the aim of supplying the goods concerned to the European market in a climate of fair competition, as the applicant submits.
50 As has been pointed out in paragraph 42 above, it is apparent from the case-law that bad faith can be characterised by, inter alia, the intention of obtaining an exclusive right for purposes other than those falling within the functions of a trade mark, in particular the essential function of indicating origin. In the present case, it is apparent from the chronology set out in paragraphs 2 to 18 above that the applicant, first of all, filed the contested marks, which were registered without opposition on the part of Krentin, which was the proprietor of the earlier national marks, and then granted licences in respect of them to Krentin or companies which had close links with Krentin. Thereafter, around two months before it applied to be declared insolvent, Krentin surrendered its rights in the earlier national marks which were equivalent to the contested marks. That had the result of preventing the intellectual property rights conferred by the earlier national marks from forming part of Krentin’s assets although control over them was retained after they had been turned into equivalent EU trade marks.
51 In that regard, the applicant does not provide any plausible explanation regarding the commercial logic underlying the applications for registration of the contested marks. Moreover, it has not adduced any evidence to prove that it actually supplied the goods covered by the contested marks to the European market or even carried out an actual commercial activity other than owning the contested marks and granting them by means of licences to the company which was the proprietor of the earlier national marks or to companies which had close links with that company. It must be stated that the applicant has confined itself to repeating the arguments which it had already submitted before the Board of Appeal, by claiming that it was founded for the purpose of supplying those goods to the European market beginning with Germany and Cyprus. Consequently, and as the Board of Appeal correctly pointed out in the contested decisions, there is no conceivable reason other than that set out in paragraph 50 above for a company like Krentin to agree to having licences granted to itself, over EU trademarks which are equivalent to national marks of which it is the proprietor, and to surrendering its marks afterwards. The applicant’s intention was not therefore that of supplying the goods concerned to the European market as it claims, but that of removing intellectual property rights from Krentin’s assets, as was correctly explained in the contested decision.
52 Furthermore, the contradictions in the applicant’s arguments, which were pointed out by the Board of Appeal, only bear out the existence of a dishonest intention. In that regard, the Board of Appeal pointed out that the applicant had explained, during the proceedings before the Cancellation Division, that there was contact between itself and Krentin only after the applications for registration of the contested marks had been filed. However, as is apparent from paragraph 28 of the application, and as EUIPO has correctly pointed out, the applicant nevertheless claims that it reached an agreement with all the parties involved (Krentin, CREDIN Denmark, Bertzeletos SA and Mr Théodore Bertzeletos) in 2014, before it filed the applications for registration of the contested marks. It must be stated that the applicant has in no way provided any explanations regarding that contradiction.
53 Consequently, the Board of Appeal was right in finding that the applicant had filed the contested marks with the aim of undermining the interests of third parties and not with the aim of supplying the goods concerned to the European market in a climate of fair competition>>.