The Italian Supreme Court has confirmed that Article 19 (2) of the Industrial Property Code prohibiting registration of trademarks in bad faith does not apply to the registration of abandoned trademarks that have ceased to produce effects.
Editrice Radio Vicenza had once owned of a registration for the trademark “Radio Vicenza”, but had not renewed the registration as of 1998.
In June 2007, when Radio RVA in turn obtained a registration for the trademark “Radio Vicenza”, Editrice Radio Vicenza brought a court action aiming essentially to obtain a declaration of nullity of the new registration.
Editrice Radio Vicenza claimed, inter alia, that Radio RVA had applied for registration of the “Radio Vicenza” mark after discussing a possible joint business venture with Editrice Radio Vicenza under the “Radio Vicenza” mark.
The District Court and Court of Appeal of Venice had both denied the requests of Editrice Radio Vicenza, which appealed to the Italian Supreme Court.
In its decision of 30 April 2018 No 10390, the 1st Civil Section of the Supreme Court dismissed the appeal confirming the criteria for application of Article 19 (2) of the Italian Industrial Property Code which stipulates that “a trademark may not be registered if the application has been made in bad faith”.
Registration of trademarks in bad faith
The decision points out that several instances of trademark registration in bad faith are already the subject of specific provision of the Italian Industrial Property Code: the registration as a trademark of a name enjoying notoriety, or of a mark known and used for identical or similar products. But these are typified situations in which registration is void not because it was made in bad faith -the case provided for by Article 19 (2) – but rather because of the existence of an earlier right.
According the Supreme Court, Article 19 (2) is on the contrary a “closing provision”, which applies only in situations that do not already constitute grounds for refusal of registration or causes for nullity under other provisions. Case law confirms that the provision in question is intended to protect subjects that have made plans or preparations to use a mark and are about to apply for its registration.
Basically, the provision on registration of a trademark in bad faith protects the legitimate expectation concerning the trademark that an interested party intended to register – in order to start using it or because of its growing success – and has, on the contrary, been registered by a third party who has become aware of that expectation.
However in the case at issue, considering that the plaintiff had abandoned the trademark registration since 1998 and had not even used the mark at least since 2001, the Supreme Court held that Article 19 (2) did not apply on the grounds that there cannot be a finding of bad faith in the registration of a mark identical to a registered trademark, previously owned by others, which however has definitively ceased to produce its effects owing to non-use for a considerable length of time and to non-renewal of registration. Under the circumstances, it was irrelevant for the court that the new registration had been made pursuant to a negotiation with the owner of the previous registration, who had claimed to own trademark rights that no longer existed.
The decision points out, in conclusion, that neither Italian nor European Union laws forbid the registration of a mark whose registration has lapsed when the new application is filed.
It must be added however that the outcome would have been different had the trademark lapsed recently or been still well known by the public. To this regard, the Supreme Court refers to the judgement in case T-327/12 (Simca Europe Ltd.) of 8 May 2018, in which the General Court of the European Union held that a trademark which had been long before abandoned but was still alive in the public’s memory had been registered in bad faith: in that case bad faith had been found in the deliberate registration of a trademark for the purpose of causing an association with the old trademarks and take advantage of their renown.