Ancora sul deposito di marchio in mala fede

Il Trib. UE 09.06.2021, T-396/20, Aeroporto di Villanova d’Albenga SpA (Riviera-Airport), c. EUIPO-Aéroports de la Côte d’Azur di Nizza, interviene sul tema, che sta diventando sempre pi frequententemente occasione di liti.

Si veda nella sentenza il marchio figurativo chiesto in registrazione.

L’opposizione fu basata sull’art. 52 reg. 207/2009 per cui: <<Su domanda presentata all’Ufficio o su domanda riconvenzionale in un’azione per contraffazione, il marchio UE è dichiarato nullo allorché:a) …;  b) al momento del deposito della domanda di marchio il richiedente ha agito in malafede.>>

La sentenza non contiene particolari elaborazioni teoriche ma interessanti elementi fattuali, importanti per l’operatore.

In generale ricorda che <<31  When interpreting the concept of bad faith, the Court of Justice has found previously that while, in accordance with its usual meaning in everyday language, bad faith presupposed the presence of a dishonest state of mind or intention, that concept had moreover to be understood in the context of trade mark law, which was that of the course of trade. In that regard, it held that Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 2014 L 11, p. 1) and Regulations No 207/2009 and 2017/1001, which were adopted subsequently, had the same objective, namely the establishment and functioning of the internal market. The rules on the EU trade mark are aimed, in particular, at contributing to the system of undistorted competition in the European Union, in which each undertaking must, in order to attract and retain customers by the quality of its goods or services, be able to have registered as trade marks signs which enable the consumer, without any possibility of confusion, to distinguish those goods or services from others which have a different origin (see judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 45 and the case-law cited).

32      The Court of Justice inferred from this that the absolute ground for invalidity referred to in Article 52(1)(b) of Regulation No 207/2009 applied where it was apparent from relevant and consistent indicia that the proprietor of an EU trade mark had 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 recalled in paragraph 31 above (see judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 46 and the case-law cited).

33      The Court of Justice has also held that the intention of a trade mark applicant is a subjective factor which, however, had to be determined objectively by EUIPO. 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).>>

L?ufficio aveva rigettato l’opposizione di malafede <<on the basis of the documents in the file, that (i) prior to the date on which the contested mark was filed, namely 22 February 2017, there was no airport called Riviera Airport in Italy, (ii) there was no evidence showing that an air transport service or any other commercially relevant service had actually been provided in that airport under the sign Riviera Airport and (iii) the activities carried out between September 2016 and July 2017 showed only the applicant’s preparatory activities with a view to potentially relaunching Albenga Airport under the name Riviera Airport.  In that regard, it should be noted that all the commercial documents, such as invoices or communications with the public, which the applicant submitted are associated either with the names Aeroporto Clemente Panero or Aeroporto di Villanova d’Albenga, or with the abbreviation AVA, and that it added the element ‘riviera airport spa’ to its company name only in July 2017, namely after initiating opposition proceedings. The Board of Appeal was also unable to find that either an article from the online encyclopaedia Wikipedia or email addresses had probative value since the content of the former could have been created or altered by anyone and there was no proof that the latter had been used in the context of a commercial or professional activity. The only document in the file in which the name Riviera Airport appears is an internal document relating to a modernisation plan referring to the airport with the names above; that plan was not communicated externally. On the basis of the evidence produced by the applicant, the Board of Appeal was able to find, correctly, that the applicant had not proved earlier use of the name Riviera Airport and that its mere plan to use that name in the future was not in itself conclusive for a presumption of bad faith>>, §§ 38-39.

Nè è stata ravvisata la mala fede per l’allegata violazione di un rapporto previo fiduciario, che non  è stato accertato: << 43  In that regard, it must be held that the Board of Appeal did examine other factual circumstances. As a second step, the Board of Appeal focused its examination on the applicant’s arguments relating to the alleged fiduciary relationship between the applicant and the intervener.   44      In that context, according to the applicant, the existence of an earlier cooperation agreement between the applicant and a subsidiary of the intervener establishes that there had been a business and fiduciary relationship between the parties, in the context of which the ‘Riviera Airport Project’ design master plan was sent and a meeting was held, and, as a consequence, the intervener should have refrained from applying to register the contested mark.   45      As the Board of Appeal correctly explained in paragraphs 43 to 54 of the contested decision, neither the contact which was made in February 2017 between the applicant and the intervener nor an investment agreement allow it to be concluded that there was a fiduciary relationship which required the intervener to refrain from applying to register the contested mark or, consequently, that the latter acted in bad faith.   46      As regards the contact which was made in February 2017, it must be noted that that contact is based on the letter of 20 February 2017, sent by A (director and new owner of the applicant) to B (CEO of Aéroports de la Côte d’Azur), in which A wrote that the airport Villanova of Albenga had been privatised and that he was the new owner of it. The following day, A also sent two copies of a design master plan for the ‘Riviera Airport’ project and expressed his hope of having a productive meeting on Friday 24 February. It is apparent from a cease-and-desist letter of 19 May 2017 sent by the intervener to the applicant that that meeting took place and that, during that meeting, the applicant sought the intervener’s consent to use the sign Riviera Airport, which the intervener categorically refused to give.  47      As regards the existence of an earlier cooperation agreement concluded between the applicant and a subsidiary of the intervener, it must be held, as the Board of Appeal found, that that agreement is irrelevant in so far as that agreement, which was entered into at the end of 2012 and the term of which ended in 2014, contains nothing capable of affecting the present case or the contested sign. It follows that there was no obligation on the intervener to refrain from applying to register the contested mark>>

Bansky perde il marchio (decisione sul deposito in malafede)

Molti giornali anche non specialistici hanno riportato la notizia per cui l’Ufficio Europeo dei marchi ha dichiarato nullo il marchio di Bansky riproducente il suo celebre disegno <Flower thrower>:

Flower thrower (dal database EUIPO)

Si tratta della decisione 14.09.2020 sul marchio n° 012575155 , depositato il 07/02/2014.

La decisione può essere letta nel database dell’ufficio. Purtroppo non è divisa in §§ brevi per cui il resoconto può essere meno agevole del solito (mi riferirò dunque solo al numero di pagina)

Era stato chiesto per molte classi merceologiche.

La domanda di annullamento era fondata sia sull’art. 59.1.b (deposito in malafede) sia sull’art. 59.1.a riferito all’art. 7.1.b-c del reg. 2017/1001 c.d EUTMR. Viene accolta solo sul primo punto (malafade al momento del deposito), assorbita sul secondo.

In generale sulla buona fede l’Ufficio dice che ricorre <<where it is apparent from relevant and consistent indicia that the proprietor of an EU trade mark filed its application for registration without any intention of using the contested EUTM, or withoutthe aim of engaging fairly in competition, but with the intention of undermining the interests of third parties, in a manner inconsistent with honest practices, or with the intention of obtaining, without even targeting a specific third party, an exclusive right for purposes otherthan those falling within the functions of a trade mark, in particular the essential function of indicating origin>>, p. 9.

L’onere della prova <of the existence of bad faith lieswith the invalidity applicant; good faith is presumed until the opposite is proven>, p. 8.

Bansky (nome d’arte, l’artista è ancora anonimo) non commercializzava alcun bene al momento del deposito: anzi dichiarava che la cosa non lo interessava.

Iniziò ad operare commercialmente solo dopo aver ricevuto notifica della domanda di annullamento, aprendo un negozio (una mera vetrina, senza possibilità di acquisto) per indurre ad acquisti on line.

Ma anche questa attività, il punto è interessante a livello teorico, la pose in essere, dichiarando che non vi era interessato e che lo faceva solo per non decadere dal diritto di marchio : <From the evidence submitted Banksy had not manufactured, sold or provided any goods or services under the contested sign or sought to create a commercial market for his goods until after the filing of the present application for a declaration of invalidity. Only then, in October of 2019, he opened an online store (and had a physical shop but which was not opened to the public) but by his own words,reported in a number of different publications in the UK, he was not trying to carve out a portion of the commercial market by selling his goods, he was merely trying to fulfil the trade mark class categories to show use for these goods to circumvent the non-use of the sign requirement under EU law. Both Banksy and Mr. M.S, who is a Director of the proprietor, made statements that the goods were created and being sold solely for this cause>>, p. 11

Va notato che il registrante non era Bansky (allo scopo di restare anonimo) ma un suo rappresentante (the proprietor)

Il succo della decisione è qui: <<The EUTM was filed on 07/02/2014. The evidence shows that the proprietor did not sell any goods or provide any services under the sign until after the initiation of the present proceedings. In fact the evidence shows that Banksy repeatedly made statements that he was not making or selling any of these goods and that the third parties were doing this without his permission. The evidence also shows that from the time of filing of the EUTM until after the filing of the present application this position did not change. It was only during the course of the present proceedings (after the grace period had ended and after the present invalidity proceedings had been initiated) that Banksy started to sell goods but specifically stated that they were only being sold to overcome non-use for trade mark proceedings and not to commercialise the goods. Banksy by his own admission is clearly against intellectual property laws, but this does not mean that he is not afforded the same protection under these laws as everybody else. However, there are restrictions to the right to register a trade mark and that would be in the case where the mark is filed in bad faith>>

L’ufficio dice che la mala fede può ricorrere <if it transpires that the EUTM proprietor never had any intention to use the contested EUTM, for example, a trade mark application made without any intention to use the trade mark in relation to the goods and services covered by the registration constitutes bad faith if the applicant for registration of that mark 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>, p. 12.

Il dilemma di Bansky è chiaro, dice l’ufficio: <To protect the right under copyright law would require him to lose his anonymity which would undermine his persona. Moreover, there are a number of legal issues which might even result in it being very difficult for him to actually claim copyright over the work although this can be left open for the present purposes. It is clear that when the proprietor filed the EUTM he did not have any intention of using the sign to commercialise goods or provide services. The use, which was only made after the initiation of the present proceedings, was identified as use to circumvent the requirements of trade mark law and thus there was no intention to genuinely use the sign as a trade mark. Banksy was trying to use the sign only to show that he had an intention of using the sign, but his own words and those of his legal representative, unfortunately undermined this effort. Thus it must be concluded that there was no intention to genuinely use the sign as a trade mark and the only eventual use made of the sign was made with the intention of obtaining an exclusive right to the sign for purposes other than those falling within the functions of a trade mark>, p. 12

Bisognerebbe però distinguere bene il caso della mancanza di uso da quello di uso presente ma finalizzato solo alla conservazione del diritto e nulla più: sul secondo si può discutere , costituendo il vero interesse teorico di questa vicenda. Va ricordato infatti che il registrante ha cinque anni a disposizione per iniziare l’uso, prima di decadere per non uso.

E’ noto che oggi in Italia non è necessario che il depositante sia già un imprenditore (art. 19 c.1 cpi) o che abbia da subito progetti di cessione a terzi che lo usino imprenditorialmente. C’è dottrina divergente sul punto (in Italia).

Potrebbe infatti parlarsi di uso <simulato>, che non vale l’uso <effettivo> chiesto dalla norma per evitare la decadenza.

Altro profilo interessante è quello dell’applicazione della malafede al caso in esame e cioè di chi lo chiede senza intenzione di usarlo ma al tempo stesso senza intenzione di ledere uno specifo concorrente. Il concetto di malafede infatti è di solito usato con riferimento a casi di intento lesivo verso soggetti determinati: il che non pare ricorresse nel caso Bansky o comunque bisognerebbe ragionarci.

Potrebbe in sintesi considerarsi una altra soluzione: attendere il quinquennio, ravvisandosi un uso solo simulato, invece che applicare subito la nullità per deposito in malafede (oppure -nel diritto italiano- dichiarare la nullità per violazione dell’art. 19 c.1: solo che nell’elenco di cause di nullità di cui all’art. 25 cpi, probabilmente tassativo, non è prevista, essendo prevista solo quella riferita al c.2 dell’art. 19  -malafade appunto- , per cui questa via pare preclusa)