Bad faith (article 52(1) under b) CTMR (former)): when one has the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties, or with the intention of obtaining an exclusive right for purposes other than those falling within the functions of a trade mark, in particular the essential function of indicating origin. No requirement that earlier trade mark is registered for the same of similar goods or services. Where at the time of application for the contested mark, third party was using, in at least one Member State, a sign identical with, or similar to that mark, the existence of a likelihood of confusion does not have to be established. The existence a likelihood of confusion is only one relevant factor among other for the existence of bad faith. Where there is an absence of any likelihood of confusion or similarity, other factual circumstances can constitute indicia establishing the bad faith of the applicant. Applicant’s intention needs to be examined at the time that he sought registration of an EU trade mark: General Court should thus have taken account of the applicant’s intention not only in regard to services in Class 39 of the Nice Agreement but also for goods and services in Classes 25 and 35 which corresponded to those in respect of which the appellant had registered the trade marks originally.
On 25 April 2011, intervener filed an application with EUIPO for registration of the sign, illustrated in the left corner, as a European Union trade mark. That registration was sought in respect of goods and services in Classes 25, 35 and 39 (clothing, advertising, transport). The appellant subsequently filed a notice of opposition to that application based on its own earlier figurative marks, (those are almost the same, one is shown on the right). On that basis, the mark was registered only for services in Class 39. After that, the appellant filed an application for a declaration of invalidity on the ground that it was filed in bad faith. That application was rejected by the Cancellation Division and the Board of Appeal dismissed the appeal against the rejection. According to the Board of Appeal, the goods or services for which the earlier trade marks were registered and the services in class 39 were not the same and not similar, so that Article 52(1)(b) of the Trade Mark Regulation could not be applied. The EU General Court dismissed the application. The CJEU sets aside the judgment of the General Court. In this case, the CJEU ruled that there is an application in bad faith when “the proprietor of an EU trade mark has filed the application for registration of that mark not with the aim of engaging fairly in competition but with the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties, or with the intention of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark, in particular the essential function of indicating origin recalled in the previous paragraph of this judgment.” The CJEU then ruled that there is no requirement whatsoever that the applicant for that declaration be the proprietor of an earlier mark for identical or similar goods or services. In the case of identical or similar goods or services, the existence of a likelihood of confusion on the part of the public need not necessarily be established. The existence of a likelihood of confusion is only one relevant factor among other for the existence of bad faith. In the absence of any likelihood of confusion or similarity, other factual circumstances may, depending on the circumstances, constitute relevant and consistent indicia establishing the bad faith of the applicant.
IPPT20190912, CJEU, Koton v EUIPO
C-104/18P - ECLI:EU:C:2019:724
