The mere registration of a domain name does not legitimate, ex se, the opposition against the application of a trademark. The European Court of Justice ruled in this way rejecting the appeal of Raffaele Morelli, President of the Italian Liberals Association.
The lawsuit originated from the filing of the trademark “popolo della libertà” (peoples of freedom) by Michela Vittoria Brambilla, Chief of the “Circolo della libertà” (the club of freedom). Morelli, owner of the prior domain name popolodellaliberta.it, appealed to the European Court since the rejection of the opposition by OHIM.
The Court noted that the registration of a domain name, accounted as “mere technical operation that allows its holder to use it on internet for a given period of time, does not represent an evidence of the trademark’s use in the course of a trade”. This latter requirement, together with the others listed in Article 8(4) CTMR, validates the opposition against the registration of a Community trademark.
The Court recalled that, in order to be in the course of a trade and, therefore, to establish a valid opposition, the use of a trademark, or of a different sign, should be in the context of a commercial activity with a view to economic advantage and should not be a private matter.
Moreover, the Court underlined that the redirection mechanism from the web-site www.partitodellaliberta.it to www.liberali.it does not demonstrate the use of the trademark in the course of the trade since the latter was the only one with a content among the two web-sites.
It follows that it is not possible to appeal against the usage by a third party of a sign identical or similar to the prior domain name if the commercial use is not demonstrated.