Bad faith in filing applications
8 November 2022
Bad faith in filing applications (ECJ 07.09.2022 – T-627/21 – Segimerus/EUIPO [Monsoon])
It is to be considered abusive if an EU trade mark is filed claiming priority according to Art 34 (1) EUTMR and, before the expiry of this six-month period, national trade mark applications were filed in succession every six months, alternately in Germany and in Austria, by representatives of the trade mark proprietor or affiliated companies, with these applications successively lapsing due to non-payment of the application fees.
It was assumed that the trade mark proprietor merely wanted to obtain a blocking position in order to prevent a third party from registering an identical or similar EU trade mark and to derive economic benefits therefrom, which constituted bad faith.
In the context of the comprehensive assessment under Article 59(1)(b) EUTMR, the origin of the contested sign and its use since its creation, the business logic in which the application for registration of that sign as an EU trade mark fitted, and the sequence of events at the time of the application may also be taken into account.
However, if the EUIPO finds that the objective circumstances of the case relied on by the invalidity applicant are such as to rebut the presumption of good faith on the part of the proprietor of the trade mark at issue when that mark was applied for, it is up to the proprietor of the trade mark to provide plausible explanations as to the aims and business logic of the application for that mark.
The proprietor of the trade mark at issue is best placed to inform the EUIPO of their intentions in applying for that trade mark and to provide evidence which might convince it that those intentions were legitimate, despite the existence of objective circumstances.
Henriette März
Trade Mark group
This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.
© Withers & Rogers LLP November 2022
