TRADEMARKS | EU General Court on bad faith through undue extension of priority period

On 17 January 2024, the General Court (“GC”) of the EU issued its judgment in case T-650/22 (Athlet LTD vs. EUIPO) concerning the invalidity of the EU trademark “ATHLET” (the “Contested Trademark”) for application in bad faith. The owner of the Contested Trademark had filed multiple Austrian applications for the “ATHLET” trademark and – subsequently – the application for the Contested Trademark, claiming priority of the last Austrian application. The GC deemed the Contested Trademark invalid, stating that the conduct of filing multiple national applications for the same trademark constitutes bad faith under Article 52.1 of Regulation (EC) No. 207/2009, as well as an abuse of right, when it is merely a strategy aimed at extending the 6-month priority period for a subsequent EU trademark application. According to the GC, evidence of the said abusive strategy was the rejection of each of the national applications by the Austrian Patent Office for non-payment of the registration fees, and the fact that the companies used for said applications were merely “dormant companies” with no actual commercial activity, proving that there was no genuine intention to use the trademarks.

Newsletter n. 94 – March 2024