Sandokan teaches you how to defend yourself against bad faith trademark filings

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Italian case law again pronounces on trademark filings in bad faith in the context of the extension of pre-existing trademark rights with the aim of hindering the activity of a competitor.

The Court of Rome recently handled an interesting case involving the well-known pirate character “Sandokan” and the associated exclusive rights to his name.

The dispute

The dispute started when Lux Vide, a film production company, announced the launch of a television series called “Sandokan”. Shortly after, Kartroi LLC, owner of the trademark rights for the “Sandokan” name for certain product classes since 2011, sent a warning letter to Lux Vide. They demanded that she renounce using the name Sandokan, alleging infringement of her trademark registration.

Lux Vide responded by denying any allegations of trademark infringement. In response, Katroi filed a new trademark registration for the name “Sandokan” aimed at extending the scope of its exclusive rights to include television series products (i.e. products not covered by the 2011 registrations ). In response, Lux Vide initiated preliminary non-infringement proceedings in court in Rome seeking a determination that its production of the adventure television series Sandokan did not infringe Katroi’s trademark registration, and at the same time initiated nullity proceedings before the EUIPO against Katroi’s new 2021 trademark registration on grounds of filing in bad faith.

decision

The Court of Rome ruled in favor of Lux Vide on both issues of non-infringement and bad faith. Based on Katroi’s 2011 trademark, the Court held that there was no infringement based on the lack of similarity between the products protected by Katroi’s registration and the television series products of Lux Vide , for which the applicant used the name Sandokan. It is interesting to note that the Court ruled out the possibility for Katroi to invoke the extended protection granted to well-known marks (i.e. regardless of the class of goods covered), since the indisputable reputation of the sign Sandokan does not refer to the products for which it is registered by Katroi, but to the fame of the character created by the author in his literary works.

With respect to Katroi’s 2021 trademark application, the Court found that Katroi’s behavior was a clear case of bad faith since it was abusive and was specifically aimed at preventing Lux Vide’s business, rather than protecting its own business by virtue of the essential function of a trade mark. In particular, Kotroi’s motive for extending the scope of protection of the ‘Sandokan’ sign to television products only emerged after its dispute with Lux Vide had arisen. There was no doubt, according to the Court, that the Kotroi had made a recording in bad faith in order to prevent and hinder the Lux Vide project.

Conclusion

This decision is a lesson in actions that can constitute bad faith. Trademark applicants and owners should be aware of possible bad faith filings which may also take the form of extending the “product coverage” of pre-existing trademark rights.

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