Malaysia Dairy Industries Pte. Ltd v Ankenævnet for Patenter og Varemærker.
Date: 2013-06-27
25. In accordance with settled case-law, the need for a uniform application of European Union law and the pri nciple of equality require that the terms of a provision of European Union law which makes no express reference to the law of the Member States for the purpose of determining its meaning and scope must normally be given an independent and uniform interpretation throughout the European Union; that interpretation must take into account the context of the provision and the objective of the relevant legislation (see, inter alia, Case C‑482/09 Budějovický Budvar  [2011] ECR I-0000 paragraph 29).
26. It is common ground that the wording of Article 4(4)(g) of Directive 2008/95 contains no definition of the concept of ‘bad faith’; nor is that concept defined in the other articles of that directive. Further, that provision makes no express reference to the law of the Member States in respect of that concept. Accordingly, the meaning and scope of that concept must be determined in the light of the context of the provision concerned of Directive 2008/95 and the objective of that directive.
27. As regards the subject-matter and purpose of Directive 2008/95, whilst it is true that, according to recital 4 in the preamble to that directive, it does not appear to be necessary to undertake full-scale approximation of the trade mark laws of the Member States, the directive none the less provides for harmonisation in relation to substantive rules of central importance in this sphere, that is to say, according to the same recital, the rules concerning the provisions of national law which most directly affect the functioning of the internal market, and that recital does not preclude the harmonisation relating to those rules from being complete (see, to that effect, Case C-355/96 Silhouette International Schmied  [1998] ECR I-4799, paragraph 23, and Budějovický Budvar , paragraph 30).
28. It should be added that the optional nature of a provision of Directive 2008/95 has no effect on whether a uniform interpretation must be given to the wording of that provision (see, to that effect, Case C‑408/01 Adidas-Salomon and Adidas Benelux  [2003] ECR I‑12537, paragraphs 18 to 21).
33. According to the case-law of the Court, the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system (see Budějovický Budvar , paragraph 36 and the case‑law cited).
34. It must be stated that the concept of ‘bad faith’ appears in Article 51(1)(b) of Regulation No 40/94, according to which a Community trade mark is to be declared invalid ‘where the applicant was acting in bad faith when he filed the application for the trade mark’. That provision was reproduced identically by Article 52(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), which repealed and replaced Regulation No 40/94.
35. Regulation No 207/2009, which supplements European Union trade mark legislation by creating a Community regime for trade marks, pursues the same objective as Directive 2008/95, namely the establishment and functioning of the internal market. In the light of the need for harmonious interaction between the two systems of Community and national marks, it is necessary to interpret the concept of ‘bad faith’ within the meaning of Article 4(4)(g) of Directive 2008/95 in the same manner as in the context of Regulation No 207/2009. Such an approach ensures a coherent application of the various trade mark rules in the legal order of the European Union.
36. It follows from the case-law interpreting that concept in the context of that regulation that, in order to determine the existence of bad faith, it is necessary to carry out an overall assessment, taking into account all the factors relevant to the particular case which pertained at the time of filing the application for registration, such as, inter alia, whether the applicant knew or should have known that a third party was using an identical or similar sign for an identical or similar product. However, the fact that the applicant knows or should know that a third party is using such a sign is not sufficient, in itself, to permit the conclusion that that applicant is acting in bad faith. Consideration must, in addition, be given to the applicant’s intention at the time when he files the application for registration of a mark, a subjective factor which must be determined by reference to the objective circumstances of the particular case (see, to that effect, Case C‑529/07 Chocoladefabriken Lindt & Sprüngli [2009] ECR I‑4893, paragraphs 37 and 40 to 42).
41. It should be noted that, although the grounds set out in Article 4(4) of Directive 2008/95 are listed as an option by the European Union legislature, the fact remains that a Member State’s latitude is limited to providing or not providing for that ground, as specifically delimited by the legislature, in its national law (see, by analogy, as regards Article 5(2) of Directive 89/104, Adidas-Salomon and Adidas Benelux , paragraphs 18 to 20).
42. Directive 2008/95 prohibits Member States from introducing grounds of refusal or invalidity other than those set out in that directive; this is confirmed by recital 8 in the preamble thereto, according to which the grounds for refusal or invalidity concerning the trade mark itself, for example, concerning conflicts between the trade mark and earlier rights, should be listed in an exhaustive manner, even if some of these grounds are listed as an option for the Member States which should therefore be able to maintain or introduce those grounds in their legislation.