SA.PAR. Srl v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (T-321/10)

Judgment of 11 Jul 2013

law://eu/cjeu/2010/t-321-10/para_30@2026-11-14

30In the first place, as is recalled in the case-law, the chronology of events leading to the registration of the mark at issue may constitute a relevant factor in the assessment of bad faith (see, to that effect and by analogy, Internetportal und Marketing, paragraph 23 above, paragraph 52). In the circumstances of the present case, the fact that the applicant applied for registration of the mark at issue, for which no earlier use has been demonstrated, only a few months after the start of the corporate dispute between it and the intervener, which created a period of uncertainty with regard to internal equilibrium within the latter, warrants particular attention, as correctly stated by the Board of Appeal in paragraph 74 of the contested decision, in order to assess whether the applicant acted in bad faith. Furthermore, it is clear from the file that during the period which preceded the filing of the application for registration the intervener significantly increased its turnover and the level of its reputation, to the point where it could be regarded as one of the most important operators in the civil engineering sector in Italy, as is clear from paragraph 31 of the contested decision. By virtue of its position as a shareholder with a substantial holding in the intervener’s share capital, the applicant could not be unaware of the risk of harm which registering for its own use a name sign that was almost identical to the one that had been used for a long time by the intervener — when the latter was experiencing strong growth in the circles concerned — might cause the intervener.

SA.PAR. Srl v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (T-321/10)

Key facts

History · 1 version

Connections