In EU law, registrations made in bad faith constitute grounds that can lead to the refusal or invalidity of a trade mark, as set out in Recital 29 , art. 4 and 5 of the EU Trade Mark Directive and art. 59(1)(b) of the EU Trade Mark Regulation. While there is no clear definition in the law, the CJEU has provided extensive case law on this matter.

Lindt Sprungli v Franz Hauswirth (Case C-529/07)
The Lindt Easter bunnies have been marketed since the 1930s. Lindt registered an EU shape mark to the shape of the bunny in 2000, under class 30 for chocolate and chocolate products. Hauswirth, a competitor, has been marketing similar bunnies in Austria since 1962. The question arose as to whether Lindt had registered its shape mark in ‘bad faith’, as it allegedly knew about the Austrian bunnies on the market.

In assessing the case at hand, the CJEU introduced the following criteria that need to be used in order to determine whether a trade-mark has been registered in bad faith.

1. The applicant must know that a third party is using, in at least one Member State, an identical/similar sign for an identical/similar product capable of creating confusion;
2. The applicant intends to prevent others from continuing to use such a sign; and
3. The degree of legal protection enjoyed by the third party’s sign has to be assessed in comparison to the sign for which registration is applied.

The latter cumulative criteria aim at determining whether an ‘overlap’ between the legal protections sought by Lindt and enjoyed by Hauswirth exists. This needs to be assessed on a case-by-case basis and at the time of the trade mark filing. The Austrian Supreme Court, on appeal, eventually denied Hauswirth’s claims against Lindt, leaving Lindt’s bunny shape mark intact.

Stylo & Koton v Koton (Case C-104/18)
This case addressed the specific question as to whether bad faith registrations must relate to identical or similar goods and services. AG Kokott answered the question in a rather conclusive manner (2 criteria examined by the AG). She did not rely on the Lindt criteria (§25,30) but argued that it is not essential for the goods or services to be identical/similar. She reasons that where a trade mark application is made in relation to several classes of goods/services, it is filed in bad or good faith for the entirety of goods/services sought. No distinction should be made between classes of goods/services when determining bad faith: if a trade mark has been applied for in bad faith, it is for all classes. The CJEU confirmed this view in its judgment from September this year.

Hasbro (Case C-59/09)
This case is being considered as another turning point in European trade mark law and requires owners to rethink their enforcement and filing strategies. Hasbro had registered EU trade marks (EUTM) for ‘Monopoly’ in 1996 and 2008. It re-registered the same mark ‘Monopoly’ as an EUTM in 2010 in the same and more classes, as compared to its previous registrations. In its decision on 22nd July 2019, the EUIPO Board of Appeal identified Hasbro’s re-filing as a practice related to business interests that aims at avoiding having to prove genuine use of the mark. In other words, Hasbro re-registered the mark so that it could benefit (again) from the 5 years grace period. Based on the Lindt criteria, the Board reasoned that in this case, there was intention of the right holder to prevent others from using similar signs to the trade mark and thereby invalidated all the renewed classes in its 2010 application.