Court grants preliminary injunction in bad faith trademark case

The Court of Milan granted a preliminary injunction to a cosmetics and parapharmaceutical products distribution company despite the fact that the competitor had prior registered an identical Community Trademark. In fact, according to the Court, the previous registration had been applied for with knowledge of the upcoming registration of an identical trade mark by the competitor, thence in bad faith.

The trial originated with an urgent proceedings submitted by the company F. to the Court of Milan so as to obtain the immediate seizure and an injunction against the rival company M. which, according to F., was manufacturing and selling products bearing a trademark identical to the one it had previously registered before the OHMI.

M., represented by Ms. Naj-Oleari, appeared before the court and alleged to have been using the trademark before F.’s application, which it assumed was obtained in bad faith, and submitted that F. should be prevented from using the trademark object of the dispute.

Both Italian and EC law provide that one cannot obtain the registration of a trademark if said registration was applied for in bad faith and that the trademark is invalid where the applicant was acting in bad faith when he filed the application for the trade mark.
According to Italian legal literature, bad faith arises when one, aware of the fact that an other one is about to register a trademark and has already prepared the instruments to apply it to the product and the advertising campaign to launch it, hastens to register the same trademark in his name. Case law has affirmed that the submittal in bad faith encompasses all of the hypotheses where one can lay claim on a legitimate expectance of protection of which the registering party is aware at the time of application.

Following these principles, the Court of Milan, recognizing bad faith in F.’s registration, granted a preliminary injunction against F. to prevent it from using the trademark. According to the Court the following was substantially proven by the defendant: the creative process and the stages of making up of the trademark, which lasted a few months; the receipt by F. of the e-mail containing M.’s new trademark which had been misdirected by a common supplier; M.’s sale of products bearing the trademark previous to F’s application of the trade mark; F.’s filing of other trademarks matching the social denomination and domain name of the defendant.


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