CANCELLATION No 13 839 C (INVALIDITY)

Giannini Automobili S.p.A., Via delle Idrovore della Magliana, 57, 00148 Rome (RM), Italy (applicant), represented by Barzanò & Zanardo Milano S.P.A., Via Borgonuovo, 10, 20121 Milan, Italy (professional representative)

a g a i n s t

David Reyes Garruta, C/ Clavell Nº 30, 08740 Sant Andreu de la Barca, Spain (EUTM proprietor).

On 06/07/2017, the Cancellation Division takes the following

DECISION

1.        The application for a declaration of invalidity is upheld.

2.        European Union trade mark No 14 908 495 is declared invalid in its entirety.

3.        The EUTM proprietor bears the costs, fixed at EUR 1 080. 

REASONS

On 03/10/2016, the applicant filed an application for a declaration of invalidity against all the goods and services of European Union trade mark No 14 908 495 , namely:

Class 12         Vehicles and conveyances.

Class 35         Advertising, marketing and promotional services; Commercial trading and consumer information services; Business assistance, management and administrative services.

Class 37         Maintenance, servicing and repair of vehicles.

The application is based on:

• the non-registered trade mark used in the course of trade in Italy for vehicles, engines, car manufacturer services and mechanical and repairing services;
• company name ‘Società Meccanica Industriale Giannini Automobili S.p.A.’ or also ‘Giannini Automobili S.p.A.’ registered in the Chamber of Commerce, Industry, Craft and Agriculture of Rome since 17/04/1963;
• domain name ‘gianniniautomobili.it’, registered on 04/11/2003 and duly renewed;
• domain name ‘gianniniautomobili.com’ registered on 28/11/2004 and duly renewed;
• the sign and for the words GIANNINI ROMA used in the course of trade in Italy for repairing and assistance services related to vehicles and engines.

The applicant invoked Article 53(1)(c) EUTMR in connection with Article 8(4) EUTMR.

In addition, the applicant claims that the contested EUTM was filed in bad faith in breach of Article 52(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant highlights the most relevant periods of Giannini Automobili’s company. It emphasised that it was founded in Rome in 1920 by the brothers Attilio and Domenico Giannini as an Italian-American company active in the vehicle and motor sectors, a garage specialised in the manufacture and repair of vehicles with an active role in racing world and tuning cars. The company was active in the World War II as part of the service network of the Italian assistance group and took mostly care of Army vehicles, then started manufacturing their own diesel engines and built a three-cylinder direct injection diesel truck engine and realized the appreciated racing cars, called Giaur. The company was divided in the ‘70s in Costruzioni Meccaniche Giannini S.p.A., of Attilio Giannini, focused on special tuning and design and manufacturing of engines and Giannini Automobili S.p.A., the applicant, handled by Domenico Giannini and focused on vehicle distribution and repairing services related to vehicles and engines.

The applicant held one registered trade mark  in Italy (No 1 049 978) for all goods and services in Classes 12, 18, 25 and 42 which, due to a succession in the management of the company, by mistake, was not renewed. The applicant tried to remedy this situation and filed on 18/03/2016 and 30/03/2016 for the registration of two trade marks in Italy: No 302 016 000 028 490 for the figurative Giannini Roma sign for goods in Classes 4, 8, 9, 12, 14, 18, 25 and 30 as well as services in Classes 35 and 37 and No 302 016 000 032 348 for the word ‘giannini’, for goods in Class 12.

On the bad faith

The applicant notes that the EUTM is identical to the sign used by its company for so many years

The applicant received from the e-mail address gianninidal1920@gmail.com (meaning ‘Giannini since 1920’ in Italian), two communications signed by the EUTM proprietor and dated 04/04/2016 and 05/04/2016. In the first communication, the EUTM proprietor informed the applicant of being available to discuss any kind of collaborations with Giannini Automobili, with the aim of reviving this brand in the automotive sector, because ‘(Giannini's sign) is a prestigious Italian mark founded in 1920 by Attilio and Domenico Giannini, in Rome’. In the second communication, the EUTM proprietor informed the applicant of his intention of opposing to Giannini Automobili's Italian applications, in order to preserve his rights over GIANNINI ROMA sign and stated, inter alia, that:

‘we ask you whether you are willing to collaborate or discuss the use of our trademark, please contact us! If you are willing to use our trademark, please do not hesitate to contact us!’.

The applicant further shows that the behaviour and the initiatives taken by Mr. David Reyes lead to the inevitable conclusion that he was aware of the use of the historical GIANNINI ROMA mark by Giannini Automobili for vehicles and engines in the past and repairing and assistance services related to vehicles and engines in the present day, also according to its long standing use by the applicant. This clearly reflects the dishonest intention of the EUTM proprietor as well as a breach of honest and commercial business practices, aimed to misappropriate the rights over GIANNINI ROMA sign.

In support of its observations, the applicant filed the below listed evidence. The applicant requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties. The Cancellation Division accepts this request insofar it relates to part of the evidence (specifically the financial and other sensitive commercial information contained in the documents). Therefore, it will describe that part of the evidence only in the most general of terms without divulging any such data or specific information which could breach the terms of the confidentiality request made and accepted. However, this does not apply to evidence which consists of information that is already available to the public, either on the website of the applicant and/or in the mass media (including the internet).

Evidence filed by the applicant:

1. Giannini Automobili S.p.A. certificate, from the Chamber of Commerce, Industry, Craft and Agriculture of Rome (English version);
2. gianniniautomobili.it and gianniniautomobili.com extracts from domain names registries;

3.        Wikipedia extract about the history of Giannini Automobili S.p.A.;

4. Affidavit signed by Ms. Gioia Polverelli, shareholder and adviser of Giannini Automobili S.p.A., indicating the company turnover and the costs of investments in advertising specified per year from 2010 to 2015, in Italy. The numbers are noteworthy.
5. Invoices issued in 1976, 2015 and 2016 by Giannini Automobili S.p.A. to Italian physical persons and UK, Dutch and Swedish companies and bearing the sign ;
6. Extracts from ‘Giannini’ book written by Enzo (Vincenzo) Altorio (1994), with several images of Giannini vehicles and engines;
7. Extracts from ‘Giannini A. & D. Storia di una grande passione’ book written by Vincenzo Marchionne Mattei (2013), with information about ‘Giannini’ rights;
8. Articles about Giannini Automobili’s history and services provided in La Manovella dated in March 2014 (the sign identical to the EUTM appears on a Fiat Giannini 500 participating in different racing competitions), Motornovita (January-February 1990), Autocar & Motor (18/03/1992), L’Argus (07/05/1992), Carrozzeria Italiana of 1992;
9. Awards collected by Giannini Automobili S.p.A: Award with honours for FIAT GIANNINI V at the International contest of elegance for car in 1964, Diploma with honour to Giannini Automobili S.p.A. in 1969;
10. Declarations duly signed by the Technical Manager of Giannini Automobili S.p.A. and the author of the book at Doc 6, attesting the use of ‘Giannini’ rights over years (almost one century) in connection with services of car manufacturer and dealer (up to 1990), mechanical supplier, servicing workshops;
11. Screenshots from official Giannini Automobili’s website (www.gianniniautomobili.com) showing the services offered by the garage Giannini Automobili;
12. Screenshots dated between 2006 and 2015 from Giannini Automobili’s website web archive all bearing the sign ;
13. Extracts from books related to the collaboration of Giannini Automobili with Lotus (pictures of cars like Lotus Giannini 100 Sport, Lotus 23 Giannini) and Brabham (picture of cars like Brabham-Giannini 1000 of Formula 2 in 1964);
14. Extracts from books related to the collaboration of Giannini Automobili with Fiat (pictures and details of nineteen Giannini cars e.g. Giannini regatta Turbodiesel (basis Fiat Regata D) of 1984, Giannini Superuno Prestige 1.1 cat. /TURBO DS 1992 (basis Fiat Uno […]) – 1992, Giannini 500 TV 1963 (basis Fiat 500 D) and screenshots from FIAT website, showing Giannini Automobili S.P.A. as official assistance and repairing garage. The quality of the images presented in the book is not so good but the name ‘Giannini’ as well as a sign which appears to be very similar if not identical to the contested mark appear on these cars, as emblems. The sign  appears in an old advertisement for the garage Giannini A.&D. Roma.
15. Extracts from the Italian Patent and Trademark Office of Giannini trade marks listed above and translations thereof;
16. Communications from the EUTM proprietor detailed above.

The arguments related to the relative grounds for invalidity will be listed, if necessary, further in the decision.

The EUTM proprietor did not file evidence or arguments in reply.

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 52(1)(b) EUTMR

General principles

Article 52(1)(b) EUTMR provides that a European Union trade mark will be declared invalid where the applicant was acting in bad faith when it filed the application for the trade mark.

There is no precise legal definition of the term ‘bad faith’, which is open to various interpretations. Bad faith is a subjective state based on the applicant’s intentions when filing a European Union trade mark. As a general rule, intentions on their own are not subject to legal consequences. For a finding of bad faith there must be, first, some action by the EUTM proprietor which clearly reflects a dishonest intention and, second, an objective standard against which such action can be measured and subsequently qualified as constituting bad faith. There is bad faith when the conduct of the applicant for a European Union trade mark departs from accepted principles of ethical behaviour or honest commercial and business practices, which can be identified by assessing the objective facts of each case against the standards (Opinion of Advocate General Sharpston of 12/03/2009, C 529/07, Lindt Goldhase, EU:C:2009:361, § 60).).

Whether an EUTM proprietor acted in bad faith when filing a trade mark application must be the subject of an overall assessment, taking into account all the factors relevant to the particular case (11/06/2009, C 529/07, Lindt Goldhase, EU:C:2009:361, § 37).

In the overall assessment, ‘consideration must be given to the [EUTM] applicant’s intention at the time when he files the application for registration’, and this intention is ‘a subjective factor which must be determined by reference to the objective circumstances of the particular case’ (11/06/2009, C 529/07, Lindt Goldhase, EU:C:2009:361, § 41 and 42). What is required are, on the one hand, objective circumstances, such as actions taken by the EUTM proprietor which reflect his dishonest intention, and, on the other hand, objective standards against which such actions can be measured and subsequently qualified as amounting to bad faith.

The fact that a third party has long used a sign for an identical or similar product capable of being confused with the mark applied for and that that sign enjoys some degree of legal protection is one of the factors relevant to the determination of whether the applicant was acting in bad faith. In such a case, the applicant’s sole aim in taking advantage of the rights conferred by the EUTM might be to compete unfairly with a competitor who is using a sign which, because of characteristics of its own, has by that time obtained some degree of legal protection (11/06/2009, C 529/07, Lindt Goldhase, EU:C:2009:361, § 46 and 47).

Nevertheless, it cannot be excluded that even in such circumstances, and in particular when several producers were using, on the market, identical or similar signs for identical or similar products capable of being confused with the sign for which registration is sought, the applicant’s registration of the sign may be in pursuit of a legitimate objective (11/06/2009, C 529/07, Lindt Goldhase, EU:C:2009:361, § 48).

As a general rule, good faith is presumed until the opposite is proven and the burden of proof, in that respect, rests with the invalidity applicant. As the notion of bad faith is based on the subjective intentions of the EUTM proprietor at the time of filing of the EUTM, which are usually not apt to be proven directly by the invalidity applicant, all the objective circumstances of the case, including those prevailing before and after the filing, must also be taken into consideration.

It is for the applicant for invalidity who intends to rely on that ground to establish the circumstances which enable the conclusion that the holder of a EUTM trade mark was acting in bad faith at the time of filing the application for its registration (21/03/2012, T-227/09, FS, EU:T:2012:138).

Assessment of bad faith

The Cancellation Division finds that the evidence indicates that the sign  or simply Giannini was used and very well-known in Italy for car and parts of cars manufacturing and car services like repairing and tuning for almost a century, that old cars or customized cars bearing the Giannini Roma sign have taken part in rallies over the years, and that the mark is referred to in the press and literature in relation to manufacture, tuning and repairing services for cars as well as car racing.

In the ‘Giannini’ book written by Enzo (Vincenzo) Altorio (1994) both the sign  and the sign identical to the EUTM appear on vehicles dated in the Sixties as well as on different parts of vehicles.

In the book ‘Giannini A. & D. Storia di una grande passione’ there are pictures with the catalogue of 1968 bearing the figurative sign .

The invoice examples (two of them dated in 1976 and five dated in 2015 before the filing date of the EUTM) all bearing the sign  show the use of it for car repairing services.

As referred to above, in determining whether bad faith was evident at the time of filing, all factors in the case must be taken into account. Evidence referring to circumstances or actions after the date of filing cannot be disregarded. However, the evidence must in itself reflect the dishonest intention of the applicant at the time of filing or clearly support other evidence of bad faith at the time of filing.

In the present case, although no contractual relation between the parties prior to the filing has been proven, the contested mark identically reproduces the mark used by the applicant. The Court has stated that the fact that marks are identical is not in itself sufficient to show bad faith (01/02/2012, T 291/09, Pollo Tropical chicken on the grill, EU:T:2012:39) but the circumstances in the case T-291/09 were different from the present case. In the present case there is no explanation from the EUTM proprietor for the striking identity between the complex sign used publicly for almost a century by the applicant in Italy and the contested EUTM, for the identity between the goods and services produced and offered by the applicant for so many years and the ones for which the EUTM was registered in Classes 12 and 37 and for the two e-mails sent by the EUTM proprietor to the applicant from an e-mail address which is translated as ‘giannini since 1920’.

All these factors lead to a believe that the proprietor must have had sufficient knowledge of the history of the trade mark GIANNINI ROMA in its verbal or figurative form and of its long time use for manufacture, tuning and repairing services for cars as well as car racing.

Attention is drawn to the e-mail address of the EUTM proprietor which in the Cancellation Division’s opinion is another indication of his knowledge regarding the entire history of the GIANNINI ROMA signs (figurative or verbal) as well as of his intention to misappropriate the long-time existent rights and benefit of the renown they attained.

Further indication about the EUTM proprietor’s clear knowledge of the Italian trade mark’s  long history, knowledge and its creators lies in the first e-mail sent to the applicant, where the EUTM proprietor expresses his intention to revive the trade mark because ‘(Giannini's sign) is a prestigious Italian mark founded in 1920 by Attilio and Domenico Giannini, in Rome (emphasis added).

Since mere knowledge is still not enough to establish bad faith, the applicant must submit objective evidence of the proprietor’s actions reflecting a subjective dishonest intention. In the present case, the applicant provided little, but sufficiently strong, evidence in this regard.

As explained above, the evidence demonstrates that on 04 and 05/04/2016 almost immediately after the registration of the contested EUTM (24/03/2016), the proprietor contacted the applicant and attempted to propose some kind of deal regarding the sign GIANNINI ROMA (verbal or figurative). The neutral tone in the first e-mail changed one day later into a threatening one in his second e-mail in which the proprietor noticed that the applicant filed on 18/03/2016 and 30/03/2016 for the registration of the two Italian trade marks mentioned above.

The EUTM proprietor of Spanish origin and bearing a Spanish name, did not provide any explanation as to why out of all the names he could have chosen to register as a trade mark (including his own name), he happened to select precisely a well-known Italian surname together with the city name ‘Roma’.

Further, no explanation was given regarding the change of attitude towards the applicant from one day to another and although the filing of notices of opposition per se (as the EUTM proprietor threatened) is not an indicator of possible bad faith on the part of the EUTM proprietor (04/05/2011, R 1354/2010-1, yello, § 17), the evidence in this case shows that the proprietor did not file the contested EUTM in order to use it, but only to prevent its long time user and owner to continue to use it and register it.

The lack of information, arguments or evidence from the EUTM proprietor regarding his intention to use the EUTM leads the Cancellation Division towards this conclusion. In the circumstances and in view of the evidence submitted by the applicant, the burden of proof has effectively shifted from the applicant to the proprietor in the sense that the latter should have been able to safely explain and demonstrate the reasons for such a situation.

Extent of the invalidity

When bad faith of the EUTM proprietor is established, the whole EUTM is declared invalid, even for goods and services that are unrelated to those protected by the invalidity applicant’s mark.

The General Court confirmed the Board of Appeal’s decision and stated that a positive finding of bad faith at the time of filing the contested EUTM could only lead to the invalidity of the EUTM in its entirety (11/07/2013, T-321/10, Gruppo Salini, EU:T:2013:372, § 48).

Whereas the Court did not expand on the reasons for this conclusion, it can be safely inferred that it took the view that the protection of general interest in business and of commercial matters being conducted honestly justifies invalidating an EUTM for goods/services that are dissimilar to those of the invalidity applicant, even those that do not even belong to an adjacent or neighbouring market.

Therefore, it seems only logical that the invalidity, once declared, should extend to all the goods and/or services covered by the contested EUTM, even those that, in an examination solely based on Article 8(1)(b) EUTMR, would be found to be dissimilar.

In the present case, the Cancellation Division concludes that the contested goods and services in Classes 12 and 37 are identical or similar to the goods and services for which the applicant used the sign . The remaining contested services in Class 36 are not related to the goods and services for which the earlier sign was used.

Nevertheless, it seems logical that the invalidity must be declared for all of the goods and services, including those that are dissimilar to the goods and services of the applicant’s sign. Therefore, the extent of the invalidity is total.

Conclusion

Consequently, the filing of the contested EUTM was made in breach of the legitimate interests and expectations of the invalidity applicant, who prior to the filing of the contested EUTM through use had achieved at least a certain degree of notoriety in Italy within the field of car manufacturing, tuning, repairing and racing. As a result, the Cancellation Division finds that the EUTM proprietor was acting in bad faith when filing the contested EUTM and that the contested EUTM must be invalidated in its entirety.

As the application for invalidity is upheld in its entirety on the basis of Article 52(1)(b) EUTMR, there is no need to further analyse the earlier rights and grounds invoked (Article 53(1)(c) EUTMR in connection with Article 8(4) EUTMR).

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, he must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and (6) EUTMIR and Rule 94(7)(d)(iii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Oana-Alina STURZA

Ioana MOISESCU

Pierluigi M. VILLANI

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.