Knowledge of foreign use insufficient to determine bad faith

28-08-2013 Print this page
IPPT20130627, CJEU, Malaysia v Dairy

TRADE MARK LAW

 

“Bad faith” is an autonomous concept of European law which must be given uniform interpretation. Irrelevant that the concept is optional.
 

"29. Having regard to the foregoing considerations, the answer to the first question is that Article 4(4)(g) of Directive 2008/95 must be interpreted as meaning that the concept of ‘bad faith’, within the meaning of that provision, is an autonomous concept of European Union law which must be given a uniform interpretation in the European Union."

 

No room for specific, deviating domestic systems of protection based on knowledge of foreign mark.
 

"43. Consequently, the answer to the third question is that Article 4(4)(g) of Directive 2008/95 must be interpreted as meaning that it does not allow Member States to introduce a system of specific protection of foreign marks which differs from the system established by that provision and which is based on the fact that the applicant knew or should have known of a foreign mark."

 

Knowledge of third party’s foreign use of mark which is liable to be confused insufficient to determine bad faith.

 

"37. In the light of the foregoing considerations, the answer to the second question is that Article 4(4)(g) of Directive 2008/95 must be interpreted as meaning that, in order to permit the conclusion that the applicant is acting in bad faith within the meaning of that provision, it is necessary to take into consideration all the relevant factors specific to the particular case which pertained at the time of filing the application for registration. The fact that the applicant knows or should know that a third party is using a mark abroad at the time of filing his application which is liable to be confused with the mark whose registration has been applied for is not sufficient, in itself, to permit the conclusion that the applicant is acting in bad faith within the meaning of that provision."

 

IPPT20130627, CJEU, Malaysia v Dairy

 

C-320/12 - ECLI:EU:C:2013:435