IP case law Court of Justice

Bad faith application

Article 51(1)(b) CTM Regulation
Article 4(4)(g) Directive 2008/95

1 pending referral

Referral C-371/18 (Sky and Others, 6 Jun 2018)


2 preliminary rulings

Judgment of 27 Jun 2013, C-320/12 (Malaysia Dairy)

Article 4(4)(g) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks 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.

Article 4(4)(g) of Directive 2008/95 must be interpreted as meaning that, in order to permit the conclusion that the person making the application for registration of a trade mark 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 person making that application 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 person making that application is acting in bad faith within the meaning of that provision.

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 person making the application for registration of a mark knew or should have known of a foreign mark.

Judgment of 11 Jun 2009, C-529/07 (Lindt)

In order to determine whether the applicant is acting in bad faith within the meaning of Article 51(1)(b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, the national court must take into consideration all the relevant factors specific to the particular case which pertained at the time of filing the application for registration of the sign as a Community trade mark, in particular: – the fact that the applicant knows or must know that a third party is using, in at least one Member State, an identical or similar sign for an identical or similar product capable of being confused with the sign for which registration is sought; – the applicant’s intention to prevent that third party from continuing to use such a sign; and – the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought.

4 appeals

Judgment of 6 Sep 2018, C-488/16 (Bundesverband Souvenir - Geschenke - Ehrenpreise v EUIPO)


Order of 14 Dec 2017, C-101/17 (Verus Eood v EUIPO)


Order of 11 May 2017, C-639/16 (Foodcare - EUIPO)


Order of 7 Feb 2013, C-266/12 (Feng Shen Technology)



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