In a recent -- and controversial -- case (full text in Spain:Tribunal de Marca Comunitaria, rollo de la Sala nº 585 (c 23) 07
), the Spanish Community Trade Mark Tribunal (Second Instance) has elaborated on the notion of what constitutes an application for a trade mark in bad faith. The Spanish Community Trade Mark Tribunal considered that applying for the registration of a (later) Spanish national trade mark that is
1. identical to a prior CTM but
2. designates different products and services
cannot be considered as “an application in bad faith
” within the terms of Article 51.1 b) of the Community Trade Mark Regulation
, according to which “A Community trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings, … where the applicant was acting in bad faith when he filed the application for the trade mark”.
In this case the owner of Community trade mark no. 002428894 “PIQUADRO” (registered in class 18, inter alia, for “Skins and leather and imitation skins and leather; trunks, suitcases, small suitcases, traveling bags, rucksacks, purses, pouches, gent's handbags and other small leather items such as pocket wallets, card cases, briefcases, object holders and key cases") sought the cancellation of the later Spanish trade mark no. 2545772 “Piquadro Collection” covering class 9 (“accessories, shoelaces, chains, glasses cases, contact lens cases”).
The First Instance Court allowed the cancellation action against “Piquadro Collection”, as it considered that it was registered in bad faith. Reversing the judgment of the lower Court, the Spanish Community Trade Mark Tribunal went further and stated that, for the purpose of assessing the existence of "bad faith" it is necessary that there have been prior relations/negotiations/dealings between the claimant (rightful trade mark owner) and the opponent (who would register the trade mark with a spurious intentions in a later stage). It seems it that this was not the case.