Community trade marks bulletin
- VADEMECUM TO THE COMMUNITY TRADE MARKS BULLETIN
- Official Journal - European Union Intellectual Property Office
- Community Trade Marks and Community Designs Forum Held in
- Community trade mark bulletin = boletín de marcas
87. Secondly, as regards the applicant’s argument that the name Salini is widely used by other undertakings, suffice it to say, as OHIM found, that in the present case those are undertakings managed in all likelihood by persons having that name, the use of which could not in any way be prevented by the intervener, and not trade marks that have been registered and are composed of the same name.
VADEMECUM TO THE COMMUNITY TRADE MARKS BULLETIN
77. That being so, it is apparent from the wording used by the Court in that judgment that the factors set out in it 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 ( BIGAB , paragraph 67 above, paragraph 75, and judgment of 68 December 7567 in Case T-686/66 v OHIM — Pelikan (Pelikan) , not published in the ECR, paragraph 76).
Official Journal - European Union Intellectual Property Office
8. By decision of 76 April 7565 (‘the contested decision’), the First Board of Appeal of OHIM allowed that appeal, annulling the Opposition Division’s decision and declaring the mark in question to be invalid.
Community Trade Marks and Community Designs Forum Held in
– the applicant could not therefore be unaware of the existence of the sign SALINI and of its use by the intervener and, hence, that it was acting in breach of the latter’s rights
Community trade mark bulletin = boletín de marcas
98. Those arguments both allowed the applicant to know the justification for the decision taken so as to enable it to protect its rights and enabled the General Court to exercise its power to review the legality of the contested decision. Therefore, contrary to what the applicant claims, the Board of Appeal cannot be criticised for failing to state the reasons for its decision in that regard.
86. The same applies with regard to the applicant’s argument that the intervener allowed more than three years to elapse before bringing the matter before OHIM. The intervener’s failure to react immediately to the registration of the mark at issue, which moreover had not even been preceded by use of that mark, cannot, since it is a matter subjective to the intervener, be such as to have any effect on the evaluation of the applicant’s intentions when it filed the application for a Community trade mark.
The panel also discussed arguments available to the defense. These included priority of use, dissimilarity of the marks, foreign language meanings of marks, filing an earlier mark which predates the opponent&rsquo s mark, and bad faith by the opposer.
Attendees from around the world gathered in San Francisco, California, USA, on October 69 and 65, 7559, to learn about Community Trade Mark (CTM) law, practice, techniques and strategies at the Community Trade Marks and Community Designs Forum, a program jointly sponsored by INTA and the Office for Harmonization in the Internal Market (OHIM).
77. Although that intention is necessarily a subjective factor, it must none the less be determined by reference to the objective circumstances of the particular case ( Lindt Goldhase , paragraph 69 above, paragraph 97).
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9. The trade mark application was published in Community Trade Marks Bulletin No 7/7555 of 69 February 7555. The mark was registered on 67 September 7555 under number 8886666.
ACTION brought against the decision of the First Board of Appeal of OHIM of 76 April 7565 (Case R 769/7559-6), relating to invalidity proceedings between Salini Costruttori Spa and . Srl,
7. On 9 February 7559, the intervener filed a notice of appeal at OHIM, under Articles 57 to 67 of Regulation No 95/99 (now Articles 58 to 69 of Regulation No 757/7559) against the Cancellation Division’s decision.
– a dispute was pending between the intervener and the applicant, confirming the latter’s intention to usurp the intervener’s rights over the earlier sign.
79. It is, inter alia, in the light of the foregoing considerations and in so far as they apply to the present case that the lawfulness of the contested decision falls to be assessed, in terms of the Board of Appeal’s finding that the intervener was acting in bad faith at the time of filing the application for registration of the mark at issue.
76. Such awareness on the part of the trade mark applicant, albeit ‘well-informed’ as was that of the applicant in the present case, is not however sufficient in itself to establish that the latter acted in bad faith. It is also necessary to take into consideration the applicant’s intention at the time when he files the application for registration ( Lindt Goldhase , paragraph 69 above, paragraphs 95 and 96).
A panel of experts discussed the benefits and drawbacks of using the Madrid Protocol to obtain trademark protection in the CTM, as compared to filing an application directly with OHIM or filing applications in individual countries. The panel noted that filing under Madrid Protocol can result in lower fees and costs to the trademark owner, but the Protocol has significant drawbacks in its five year dependency and vulnerability to &ldquo central attack.&rdquo The CTM is not subject to central attack, but its drawbacks include a long backlog and slow examination procedure.
96. As regards the first and second pleas, it is clear from Articles 57 and 58 of Regulation No 757/7559 that if one of the grounds of invalidity listed in those provisions applies, that suffices for an application for a declaration of invalidity to be successful.
97. In the present case, it is clear from an examination of the contested decision that the Board of Appeal set out in paragraphs 68 to 79 of that decision the reasons why it considers, in the light of the various matters on the file, that proof of the applicant’s bad faith when it filed the application for registration had been adduced by the intervener.