- News
- News
Aermacchi decision about bad faith
On the 25th of February last, the Fourth Board of Appeal issued a very interesting decision about bad faith. In this Case R2448/2010-4 the Board held in favour of our Client overturning the Cancellation Division decision.
Briefly the facts of the case: on the 3rd of November 2007 Grupo Canasci S.L. filed a CTM application for AERMACCHI MILANO and an eagle wings wide open device in classes 14, 18 and 35. AERMACHI is a long standing and reputed trademark in the aviation field.
In 2008 Finmeccanica (owner of the Aermacchi trademark) filed an invalidity proceeding based on art. 52 (1) (b) (bad faith) and 53(1) (a) in conjunction with 8 (5) (reputation) against Canosci Group’s identical trademark.
The Board of Appeal found our appeal admissible and well-founded and decided only on the basis of art. 52, 1, b CTMR : “bad faith”. After having defined bad faith as “dishonesty which would fall short with the standard and acceptable commercial behavior” a great deal of attention has been paid to the circumstances of the case in order to assess the existence of bad faith upon the Respondent.
In a nutshell, the factual elements that have played an important role in the Board’s finding can be summarized as follow:
1. Historicstanding reputation of Aermacchi as a producer of airplanes and in the 70’s as co-producer of motorbikes with Harley Davidson;
2. Representation of airplanes in the respondent’s web site to advert and publicize watches called Aermacchi. In the same web site few watches were also called TORNADO
3. The opening of an Italian office near to the headquarter of Aermacchi ( Varese near Milan).
4. In march 2009 those respondent’s web pages were deleted without any reason given,to re- appear later on with the same direct links to the aviation world.
5. The registration by the Respondent of another Italian trademarkwithout consent or authorization from its legitimate owner.
All these elements were considered sufficient in the light of reputation of Aermacchi to find for the manifestly dishonest business intentions of the Registrant/Respondent.