Sul sempre assai antipatico “scippo” di marchio spettante ad altri è istruttivo il caso deciso da Tribunale UE, T‑466/21, Baumberger c. EUIPPO, del 19.10.2022.
Un ristorqtore di Ibiza gestiva dal 2011 il <<Lío club >> includente a restaurant, a cabaret and a nightclub.
Un tedesco, dopo averlo visto sul posto, nel 2015, registrava
per arredo casa e abbigliamento (tazze pentole asciugamani magliette etc.). Ha quindi la pensata di venderlo allo spagnolo: glielo offre prima per 1,5 millioni di euro e poi per 3,5 milioni di euro!!.
Lo spagnolo però aveva delle anteriorità per classi 41 e 43, tipo
Il Trib. conferma l’ufficio circa la nullità per deposito in malafede (art. 59.1.b reg. 2017/1001.
L?interesse come sempre sta nella motivazione che porta al dispositivo e cioè, qui, nel capiure quali sono i fattori che sostengono il giudizio di deposito in malafede.
L’ufficio si era basato su sei aspetti, § 15:
In the first place, the Board of Appeal found that the contested mark was virtually identical to the intervener’s Lío sign.
In the second place, it found that the applicant was fully aware of the intervener’s commercial activity at the time when he applied for registration of that mark.
In the third place, it considered that he had neither shown a proper and economically viable use of the contested mark nor a business activity observing an honest commercial logic and
in the fourth place, that his attempts to sell the contested mark and mark No 17225939 to the intervener appeared to be at odds with ethical and honest commercial practices due to the aspects of undue pressure which they contained.
In the fifth place, it stated that there was no comprehensible connection between the contested mark, the applicant and his activity.
Lastly, in the sixth place, it considered that his explanations were not free from contradictions, in particular as regards his allegedly famous dog and the book about that dog. It concluded that registration of the contested mark had been applied for with the intention of taking unfair advantage of the reputation of the Lío club. Thus, it took the view that the real purpose was to free-ride on the intervener’s reputation and take advantage of that reputation, in particular by selling the contested mark and mark No 17225939 for a disproportionate price.
Aspetti tutti confermati dal T.
Cos’ ragione in conclusione il T.:
<< 77 The Board of Appeal found that, taking account of the six factors which it considered relevant, the applicant intended to unduly profit from the Lío club’s repute as operated by the intervener when the applicant applied for registration of the contested mark, in particular by selling that mark and mark No 17225939 to the intervener for a disproportionate price.
78 It is apparent from paragraphs 27 to 29 above that account must be taken of the applicant’s intention at the time of filing the application for registration, namely 3 June 2015, and that that intention is a subjective factor which must be ascertained by reference to the objective circumstances of the particular case.
79 In that regard, the applicant cannot reasonably claim that his intention may not be established with certainty from an external point of view. Admittedly, this is a subjective reason, but that can be inferred from conduct that departs from principles recognised as being those related to ethical behaviour. Any other interpretation of Article 52(1)(b) of Regulation No 207/2009 would make it impossible to establish the existence of bad faith within the meaning of that provision.
80 Furthermore, as the applicant submits and as is apparent from paragraph 33 above, it was for the intervener to set out the facts enabling the finding that the applicant acted in bad faith when filing the application for registration of the contested mark. In the present case, it must be held that various factors capable of establishing that bad faith were indeed adduced by the intervener.
81 It is apparent from the overall analysis of the six factors on which the Board of Appeal relied that the applicant knew the intervener’s club and the sign used by the intervener, on the day on which the mark was filed, and that the activity of that club was publicised, which was also frequented by numerous celebrities. Furthermore, it is common ground that the sign constituting the contested mark and that used by the intervener were almost identical. In addition, the content of the various sales offers made it possible to make clear the applicant’s intention at the time of filing the application for registration of the contested mark and to identify aspects of undue pressure, in particular due to the unsolicited and repeated nature of those offers, the high prices charged, the unexplained increase in the sales price upon the involvement of a new investor in the intervener’s activities, the reference to short periods of validity of the offers and items already on sale experiencing success, specifically in Ibiza, where the intervener is established. Finally, evidence of a commercial activity consistent with honest commercial logic has not been adduced.
82 In the light of the foregoing, the use of the same stylisation for the signs at issue cannot be attributed to chance, since the applicant has, moreover, accepted that the sign constituting the contested mark was inspired by the sign used by the intervener in its business activities. Therefore, there are relevant and convergent factors enabling the conclusion that the intention of the applicant seeking registration of the contested mark at the time of filing of that application was to create a connection on the part of the public between the goods and services covered by that mark and the well-known club belonging to the intervener in order for the applicant to then monetise that mark (see, to that effect and by analogy, judgment of 28 April 2021, France Agro v EUIPO – Chafay (Choumicha Saveurs), T‑311/20, not published, EU:T:2021:219, paragraph 33).
83 Accordingly, the Board of Appeal was able to deduce from the particular circumstances of the case that, by applying for registration of the contested trade mark, the commercial logic of the applicant seeking registration was to ‘free-ride’ on the intervener’s club’s reputation and take advantage of that reputation (see, to that effect and by analogy, judgment of 14 May 2019, NEYMAR, T‑795/17, not published, EU:T:2019:329, paragraph 51), in particular by selling the contested mark to the intervener for a significant amount.