CJEU: Absolute grounds for invalidity autonomous and coexistent; Bad faith filing TM application after expiry of a patent

Sign consisting exclusively of the shape of goods which is necessary to obtain a technical result. Autonomy and coexistence of the absolute grounds for invalidity. Criteria relevant to determining whether an applicant is acting in bad faith when filing an application for a trade mark. Bad faith on the part of the applicant for registration of a sign as a trade mark may, if that registration was sought following the expiry of a patent, be substantiated inter alia on the basis of the opinion of that applicant as to the suitability of that sign for expressing fully or partially the technical solution protected by that patent, irrespective of whether that sign consists exclusively of the shape of goods which is necessary to obtain a technical result. he applicant’s bad faith may not be assessed on the basis of circumstances arising after the filing of the application for trademark registration.
 

Case C-17/24 CeramTec v Coorstek

Article 7 of Regulation 207/2009 sets out the absolute grounds for refusal of registration of a sign as a trade mark. Specifically, Article 7(1)(e)(ii) provides that signs which consist exclusively of the shape of goods which is necessary to obtain a technical result shall not be registered. Article 52(1)(b) states that a trade mark shall be declared invalid if it was registered in breach of Article 7, or if the applicant was acting in bad faith at the time of filing the application. The referring court seeks clarification on the relationship between these provisions — whether they are autonomous, and whether they may be mutually exclusive.

Questions:

(1)      Is Article 52 of Regulation [No 207/2009] to be interpreted as meaning that the grounds for invalidity set out in Article 7, to which Article 52(1)(a) refers, are independent from and do not overlap with the ground of bad faith referred to in Article 52(1)(b)?

(2)      If the first question is answered in the negative, may the bad faith of the applicant be assessed by reference solely to the absolute ground for refusal of registration set out in Article 7(1)(e)(ii) of Regulation No 207/2009 where no finding has been made that the sign for which registration as a trade mark was sought consists exclusively of the shape of the product which is necessary to obtain a technical result?

(3)      Is Article 52(1)(b) of Regulation No 207/2009 to be interpreted as meaning that bad faith is to be ruled out where the applicant has applied for registration of a trade mark with the intention of protecting a technical solution and, after the application was made, it is discovered that there was no connection between the technical solution in question and the signs which constitute the trade mark applied for?

Ruling CJEU:

1.      Article 52(1) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark must be interpreted as meaning that the absolute ground for invalidity laid down in Article 52(1)(a) of that regulation, read in conjunction with Article 7(1)(e)(ii) of that regulation, and the absolute ground for invalidity laid down in Article 52(1)(b) of that regulation are autonomous, but not mutually exclusive.
 

2.      Article 52(1)(b) of Regulation No 207/2009 must be interpreted as meaning that bad faith on the part of the applicant for registration of a sign as a trade mark may, if that registration was sought following the expiry of a patent, be substantiated inter alia on the basis of the opinion of that applicant as to the suitability of that sign for expressing fully or partially the technical solution protected by that patent, irrespective of whether that sign consists exclusively of the shape of goods which is necessary to obtain a technical result, within the meaning of Article 7(1)(e)(ii) of that regulation. The relevant circumstances for assessing whether there was bad faith on the part of the applicant also include the nature of the contested mark, the origin of the sign at issue and its use since its creation, the scope of the expired patent, the commercial rationale underlying the filing of the application for registration of the contested mark and the chronology of events characterising that filing.
 

3.      Article 52(1)(b) of Regulation No 207/2009 must be interpreted as meaning that the applicant’s bad faith may not be assessed on the basis of circumstances arising after the filing of the application for registration of the mark at issue.

IPPT version will follow anytime soon
ECLI:EU:C:2025:455 and case C‑17/24