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>>