The EU trade mark system is based on the principle, laid down in Article 8(2) of Regulation No 207/2009, that an exclusive right is granted to the person who is first to file. In accordance with that principle, a mark may be registered as an EU trade mark only in so far as this is not precluded by an earlier mark, whether that mark is, inter alia, an EU trade mark, a trade mark registered in a Member State or by the Benelux Office for Intellectual Property, a trade mark registered under international arrangements which have effect in a Member State, or a trade mark registered under international arrangements which have effect in the European Union. By contrast, without prejudice to the possible application of Article 8(4) of Regulation No 207/2009, the mere fact that a non-registered mark is used by a third party does not preclude an identical or similar mark from being registered as an EU trade mark for identical or similar goods or services.

The application of that principle is qualified, inter alia, by Article 52(1)(b) of Regulation No 207/2009, under which an EU trade mark must be declared invalid on application to EUIPO or on the basis of a counterclaim in infringement proceedings where the applicant was acting in bad faith when he filed the application for registration of the trade mark. It is for the applicant for a declaration of invalidity who intends to rely on that ground to establish the circumstances which make it possible to conclude that the proprietor of an EU trade mark was acting in bad faith when he filed the application for registration of that mark.

The concept of ‘bad faith’ referred to in Article 52(1)(b) of Regulation No 207/2009 is not defined, delimited or even described in any way in the legislation.

In that regard, it must be observed, that, in the judgment of 11 June 2009Chocoladefabriken Lindt & Sprüngli, the Court of Justice provided some clarification regarding the way in which the concept of bad faith, as referred to in Article 52(1)(b) of Regulation No 207/2009, should be interpreted. Accordingly, in order to determine whether the applicant for registration is acting in bad faith, within the meaning of that provision, account must be taken of all the relevant factors specific to the particular case which obtained at the time of filing the application for registration of a sign as an EU trade mark, in particular: (i) 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 or service capable of being confused with the sign for which registration is sought; (ii) the applicant’s intention to prevent that third party from continuing to use such a sign; and (iii) the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought.

That being so, it is apparent from the wording used by the Court of Justice in the judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli, that the factors listed are only examples drawn from a number of factors which can be taken into account in order to determine whether an applicant for registration was acting in bad faith at the time when the trade mark application was filed.

It must therefore be held that, in the context of the overall analysis undertaken pursuant to Article 52(1)(b) of Regulation No 207/2009, account may also be taken of the origin of the contested sign and its use since its creation, the commercial logic underlying the filing of the application for registration of that sign as an EU trade mark, and the chronology of events leading up to that filing.

(see paras 17-22)