General Court: bad faith and battle over Salini in Italy

In Case T – 321/10, SA PAR. Srl registered the CTM GRUPPO SALINI for services in Classes 36, 37 and 42. Salini Costrutttori SpA filed an invalidity action on the grounds of Articles 52 (1) b) and 53 (1) b) CTMR together with Article 8 (1) b) as well as Article 53 (1) c) in conjunction with Article 8 (4) CTMR on the basis of earlier sign SALINI used in Italy for “property business; building constructions; repair; installation services and conception services”.

The Cancellation Division rejected the request for invalidity finding that the use of the sign the course of trade of more than mere local significance was not sufficiently proven with the proof of use submitted. Further, the Invalidity applicant had not demonstrated bad faith of the Applicant.

The First Board of Appeal cancelled the decision. First, it found that due to the nature of services which consist of engineering works, the relevant customer are working entities or private construction projectors in the framework of tender bids. Therefore, the documents submitted showing use of the name SALINI was sufficient to demonstrate it is well-known in Italy, in the meaning of Article 6 of the Paris convention, for part of the services.

Secondly, there is a risk of confusion for similar or identical services between the earlier sign SALINI, associated with ‘costruttori’ and the contested CTM, since the elements ‘gruppo’ and ‘costruttori’ (contractor or builder) are descriptive for the related services.

Thirdly, the Board found that there is bad faith when a CTM application causes damage to third party due to morally or commercially reprehensible act, in particular in this case: 1) the applicant owned an important share of the capital of the company of Gruppo Salini and were directors on its Board of directors; 2) the applicant could not ignore the use of the sign SALINI which had become increasingly one of the most well-known company in civil engineering in Italy; 3) there is litigious context including being a shareholder in both companies, confirming the applicant’s intention to unduly use the contested mark.

The General Court upheld the decision regarding the bad faith of the Applicant and dismissed the appeal.

"This article first appeared on the website http://www.marques.org. To view the issue in full, please go https://www.marques.org/class46/Default.asp?XID=BHA3309”