The Significance of Bad-Faith Premises for the Strategy of Trade Mark Protection in the Light of the Latest EU Case-Law

Abstract

EU case-law has long considered trade mark applications made in bad faith to be dishonest practice that involves a sign used by a third party. This approach stems from the crucial factors of bad faith stipulated by the CJEU in the Lindt case C-529/07. However, recent CJEU case-law clearly suggests that a trade mark application can also be alleged to be in bad faith when it has nothing to do with a third-party sign but instead involves a dishonest strategy for protecting the applicant’s own trade marks. The aim of this paper is to provide a comprehensive catalogue of premises for finding bad faith in the context of a trade mark application, and to analyse their importance from the perspective of business strategy for protecting trade marks. It follows from the relevant case-law that proving an applicant’s bad faith where the latter is alleged not in relation to the use of a third-party sign may be rather problematic, as it is difficult to demonstrate objective circumstances to corroborate an applicant’s subjective intentions, particularly when such intentions concern solely their own trade mark protection strategy. An additional difficulty comes from the CJEU’s SkyKick case C-371/18, according to which the absence of any intention to use a trade mark does not per se constitute grounds for finding bad faith. Moreover, an allegation of bad faith may provide a basis for extending legal protection to a third-party trade mark not registered in a given territory, which may be particularly useful for businesses that export goods worldwide. However, at the same time, care must be taken to reasonably balance such protection for non-registered marks with one of the crucial premises of EU trade mark protection, which is based on the principle of “first to file” not “first to use”.