Un caso di malafede da manuale, come suol dirsi, quello deciso da Trib. UE 06.10.2026. T-650/25, Vacu Activ Marcin Leśniak c. EUIPO-Lakhomoff e AR Group Roman Tchir.
Era infatti stato depositato per prevenire la registrazione in UE di un identico marchio che controparte aveva già in precedenza depositato e ottenuto in USA. E lo aveva incredibilmente ammesso nella fase impugnatoria amministrativa.
Premesse le usuali considerazioni generali sulla disciplina della invalidità per deposito in mala fede:
<< 50 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).
51 In the second place, the intention of an applicant for a trade mark 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. It is only in that manner that a claim of bad faith can be assessed objectively (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).
52 The factors taken into account by the case-law in the context of the overall analysis undertaken pursuant to Article 59(1)(b) of Regulation 2017/1001 include, in particular: 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; the applicant’s intention to prevent that third party from continuing to use such a sign; the degree of legal protection enjoyed by the signs at issue; the applicant’s intention to prevent that third party from marketing a product; the origin of the contested sign and its use since its creation; the commercial logic underlying the filing of the application for registration of the sign as an EU trade mark and the chronology of events relating to that filing (see judgment of 14 May 2025, Techtex v EUIPO – Alberts (Dr.Albert), T‑327/24, not published, EU:T:2025:490, paragraph 33 and the case-law cited).
53 In the third place, it must be borne in mind that it is for the applicant for a declaration of invalidity to prove the circumstances which substantiate a finding that the proprietor of an EU trade mark was acting in bad faith when it filed the application for registration of that mark (see judgment of 8 May 2014, Simca Europe v OHIM – PSA Peugeot Citroën (Simca), T‑327/12, EU:T:2014:240, paragraph 35 and the case-law cited), good faith being presumed until proven otherwise (see judgment of 21 April 2021, Hasbro v EUIPO – Kreativni Dogadaji (MONOPOLY), T‑663/19, EU:T:2021:211, paragraph 42 and the case-law cited).
54 Lastly, it should be noted that the registration of a trade mark by an applicant without any intention to use it in relation to the goods and services covered by that registration may constitute bad faith, where there is no rationale for the application for registration in the light of the aims referred to in Regulation 2017/1001. Such bad faith may, however, be established only if there is objective, relevant and consistent indicia tending to show that, when the application for a trade mark was filed, the trade mark applicant had the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties, or 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 (see judgment of 29 January 2020, Sky and Others, C‑371/18, EU:C:2020:45, paragraph 77 and the case-law cited)>>,
premesso ciò, ecco i fatti che inducono il Tribunale a confermare l’accertamento di deposito in mala fede, già emesso nella fase amministrativa:
<< 56 In the present case, it is apparent from the objective, relevant and consistent indicia, within the meaning of the case-law cited in paragraph 54 above, on which the Board of Appeal relied in the contested decision, that the applicant, when it filed the application for registration of the contested mark, did not intend to make use of that mark in a manner falling within the functions of a trade mark, but to prevent the interveners from using a mark similar to its own, an intention which it expressly acknowledged during the proceedings before the two adjudicating bodies of EUIPO. In its observations of 15 June 2023 on the application for a declaration of invalidity, the applicant explained that it had filed the application for registration of the contested mark, in view of the similarity between the sign VACUACTIVUS and its earlier marks Vacu Activ, in order to prevent any infringement of those earlier marks. Furthermore, as was noted by the Board of Appeal in the contested decision, the applicant was aware of the use made of the sign VACUACTIVUS by the interveners in the United States as well as of the registration of that sign as a trade mark in that territory and of the interveners’ intention to obtain protection of that sign within the European Union, as it also admits. Moreover, the applicant filed an opposition to that application on the basis of its earlier figurative trade mark, which led to the refusal, on formal grounds, of protection within the European Union in respect of the international registration>>.
A nulla serve che il deposito fosse stato anche finalizzato a proteggere un proprio precedente marchio simile: ci sono forse strumenti adatti allo scopo (da noi il marchio c.d. difensivo ex art. 24.4 cpi, di dubbia coerenza però con la disciplina UE) e quelli avrebbe semmai dovuto utilizzare.