Diritto ed Economia dell'ImpresaISSN 2499-3158
G. Giappichelli Editore

15/10/2022 - Filing of a trademark not used for some time: the existence of bad faith is excluded

argomento: News del mese - Diritto Internazionale e Comunitario

Articoli Correlati: Trademark - not used for time - bad faith

On 6 July 2022, with the judgment T-250/21, Zdút v. EUIPO, the Court of the European Union annulled the decision of the EUIPO Appeals Commission, excluding that there is bad faith on the part of those who file a trademark that has not been used for a long time and have therefore made efforts only to make it known to the public again. Specifically, the case submitted to the Court concerns the legitimacy, according to E.U. legislation, of the registration, requested in 2013 by Mr. Ladislav Zdút and granted in 2014, of the “NEHERA” brand for a variety of products, including leather goods, clothing, shoes and more. The Court has provided important interpretative standards regarding a phenomenon that occurs relatively frequently: the registration, by parties other than those who once owned them, of trademarks that are still known, but which have not been used for years or even decades. In Italy, a recent similar case was “Lambretta”, a well-known trademark, not used or renewed from the 1980s onwards and, subsequently, redeposited after decades by third parties unrelated to the former owner of the same. Also in this case, questions were raised about the legitimacy of the trademark re-appropriation operation. Other cases of “revival” of brands of the past taken up again after decades, were, for example, that of the car manufacturer Isotta Fraschini, of Schiaparelli, which belonged to the homonymous stylist, and of Galitzine, famous in the 1960s.