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Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

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Anthonia Ghalamkarizadeh
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Golden Bunnies and bad faith: the ECJ reference

The Curia website has today posted the details of the reference for a preliminary ruling from the Oberster Gerichtshof (Austria) lodged on 28 November 2007 in Case C-529/07 Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH. This reference, noted by Class 46 in passing last December, asks the Court to answer the following questions:

"1. Is Article 51(1)(b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark to be interpreted as meaning that an applicant for a Community trade mark is to be regarded as acting in bad faith where he knows, at the time of his application, that a competitor in (at least) one Member State is using the same sign, or one so similar as to be capable of being confused with it, for the same or similar goods or services, and he applies for the trade mark in order to be able to prevent that competitor from continuing to use the sign?

2. If the first question is answered in the negative:

Is the applicant to be regarded as acting in bad faith if he applies for the trade mark in order to be able to prevent a competitor from continuing to use the sign, where, at the time he files his application, he knows or ought to know that by using an identical or similar sign for the same goods or services, or goods or services which are so similar as to be capable of being confused, the competitor has already acquired 'valuable property rights'?

3. If either the first or the second question is answered in the affirmative:

Is bad faith excluded if the applicant's sign has already obtained a reputation with the public and is therefore protected under competition law?".
CLASS 46 COMMENT: These questions will give the Court an opportunity to consider the meaning of "bad faith", which in terms of as-yet unharmonised national law has been understood differently by individual Member States. However, since a Community trade mark may be invalidated in proceedings before a national CTM Court -- which must under Regulation 40/94 art.97(2) apply its own national law if there is no applicable law under the Regulation -- a consistent meaning of "bad faith" and an equally consistent application of it to the facts are both desirable. The Court may however to consider the issue only so far as it affects the facts of the referred case, in which case further references on the same subject may need to be made.

Posted by: Blog Administrator @ 12.07
Tags: Bad faith, CTM,
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MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.

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