GIANNINI ROMA | Decision 0013839

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 http://prodfnaefi:8071/FileNetImageFacade/viewimage?imageId=123918153&key=c56b7bdb0a84080324cfd13921decca9, 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 markhttp://prodfnaefi:8071/FileNetImageFacade/viewimage?imageId=123918153&key=c56b7bdb0a84080324cfd13921decca9 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 signhttp://prodfnaefi:8071/FileNetImageFacade/viewimage?imageId=123918153&key=c56b7bdb0a84080324cfd13921decca9 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.;

  1. 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.
  2. 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 ;
  3. Extracts from ‘Giannini’ book written by Enzo (Vincenzo) Altorio (1994), with several images of Giannini vehicles and engines;
  4. Extracts from ‘Giannini A. & D. Storia di una grande passione’ book written by Vincenzo Marchionne Mattei (2013), with information about ‘Giannini’ rights;
  5. 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;
  6. 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;
  7. 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;
  8. Screenshots from official Giannini Automobili’s website (www.gianniniautomobili.com) showing the services offered by the garage Giannini Automobili;
  9. Screenshots dated between 2006 and 2015 from Giannini Automobili’s website web archive all bearing the sign ;
  10. 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);
  11. 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.
  12. Extracts from the Italian Patent and Trademark Office of Giannini trade marks listed above and translations thereof;
  13. 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 http://prodfnaefi:8071/FileNetImageFacade/viewimage?imageId=123918153&key=c56b7bdb0a84080324cfd13921decca9 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