1 This reference for a preliminary ruling concerns the interpretation of Article 52(1)(a), read in conjunction with Article 7(1)(e)(ii) and Article 52(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark (OJ 2009 L 78, p. 1).
2 The request has been made in proceedings between CeramTec GmbH and Coorstek Bioceramics LLC (‘Coorstek’) concerning an infringement action brought by CeramTec against Coorstek, which has brought a counterclaim for a declaration of invalidity of three EU trade marks owned by CeramTec.
3 Regulation No 207/2009 was amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 (OJ 2015 L 341, p. 21), which entered into force on 23 March 2016. It was subsequently repealed and replaced, with effect from 1 October 2017, by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1). However, having regard to the date of the applications for registration of the trade marks contested by Coorstek in the main proceedings, which is decisive for the purposes of identifying the substantive law applicable to the application for a declaration of invalidity (see, to that effect, judgment of 29 January 2020, Sky and Others, C‑371/18, EU:C:2020:45, paragraph 49), the present reference for a preliminary ruling must be examined in the light of Regulation No 207/2009, in its original version.
4 Recital 2 of Regulation No 207/2009 stated: ‘It is desirable to promote throughout the [European Union] a harmonious development of economic activities and a continuous and balanced expansion by completing an internal market which functions properly and offers conditions which are similar to those obtaining in a national market. In order to create a market of this kind and make it increasingly a single market … [amongst other things] barriers to free movement of goods and services [must] be removed and arrangements [must] be instituted which ensure that competition is not distorted …’
5 Article 7 of that regulation, entitled ‘Absolute grounds for refusal’, provided, in paragraph 1(e)(ii): ‘The following shall not be registered: … …
6 Article 52 of that regulation, entitled ‘Absolute grounds for invalidity’, provided in paragraph 1: ‘[An EU] trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings:
7 Article 99 of that regulation, entitled ‘Presumption of validity - Defence as to the merits’, was worded as follows: ‘1. The [EU] trade mark courts shall treat the [EU] trade mark as valid unless its validity is put in issue by the defendant with a counterclaim for revocation or for a declaration of invalidity. …’
8 CeramTec is an undertaking established in Germany specialising in the development, manufacture and distribution of technical ceramic components used, in particular, in hip or knee implants. It sells those components to manufacturers of medical prostheses to form complete prostheses, which are then sold to end users, such as hospitals or orthopaedic surgeons.
9 Coorstek is an American company that manufactures advanced technical ceramics for medical purposes, in particular for artificial hip and back joints, and for dental prostheses.
10 CeramTec was the proprietor of the European patent EP 0 542 815, designating France and relating to a composite ceramic material. That patent expired on 5 August 2011.
11 On 23 August 2011, CeramTec filed three applications for EU trade marks, relating respectively to the following marks: - the colour mark registered on 26 March 2013 under No 010214195, with priority by virtue of a German trade mark of 21 July 2011, and which covers the colour pink, Pantone 677C, edition 2010; - the figurative mark registered on 12 April 2013 under No 010214112, with a priority claim by virtue of a German trade mark of 25 July 2011, and which is a graphic representation of a ball coloured pink, Pantone 677C; that mark is reproduced below: - the three-dimensional mark registered on 20 June 2013 under No 010214179, with a priority claim by virtue of a German trade mark of 26 July 2011, and which claims the colour pink, Pantone 677C; that mark is reproduced below:
12 Those marks designate the following goods in Class 10 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, of 15 June 1957, as revised and amended: ‘Ceramic parts for implants for osteosynthesis, articular surface replacement, bone spacer blocks; Hip joint balls, hip joint sockets and parts for knee joints; All of the aforesaid goods for sale to manufacturers of implants’.
13 On 13 December 2013, CeramTec brought an action for infringement and parasitic competition against Coorstek, claiming that Coorstek marketed a product which copied the colour pink, characteristic of its own goods. Coorstek filed a counterclaim for a declaration of invalidity of the three marks described in paragraphs 11 and 12 above (‘the contested marks’).
14 By judgment of 25 June 2021, the cour d’appel de Paris (Court of Appeal, Paris, France) cancelled the contested marks on the ground that CeramTec had filed the application in bad faith.
15 That court noted that, on the date of the filing of the applications for registration of the contested marks, CeramTec was convinced that chromium oxide had the technical effect of ensuring the hardness and strength of the ceramic balls used in the construction of medical prostheses, and that CeramTec had been seeking to protect the pink colour of the balls, which was caused by the presence of chromium oxide in the ceramic. It inferred from this that CeramTec had intended to extend its monopoly on the technical solution previously protected by the patent referred to in paragraph 10 above, which had expired before the date those applications for registration were filed.
16 According to that court, the bad faith was characterised by the intention not to prevent competitors from using the colour pink but to extend a monopoly and to prevent competitors from entering the market dominated by CeramTec because of the material used in its products, namely chromium oxide, in such proportion as to ensure the pink colour of its ceramics. That court held that CeramTec had therefore intended to obtain an exclusive right for purposes other than those coming under the function of a trade mark, namely the indication of origin of its goods.
17 CeramTec lodged an appeal on a point of law before the Cour de cassation (Court of Cassation, France), which is the referring court. According to CeramTec, the absolute grounds for refusal listed in Article 7 of Regulation No 207/2009 cannot characterise bad faith as referred to in Article 52(1)(b) of that regulation, unless recourse can be had to the concept of bad faith in order to circumvent or ignore the conditions for application laid down in Article 7. In addition, an interpretation of Article 52(1)(b) of that regulation that would allow a trade mark to be cancelled solely on the ground that the applicant for that mark intended to protect rights over a technical solution, without it being proven that the right over the mark at issue actually ensures the protection of such a technical solution, would also amount to circumvention of the scope of Article 7(1)(e)(ii) of that regulation and disregard for the respective areas of application of those two articles. CeramTec explains that it discovered, after the expiry of its patent and the filing of the applications for registration of the contested marks, that chromium oxide, which causes the pink colour claimed by those marks, in fact produced no technical effect.
18 Coorstek submits that Article 7(1)(e)(ii) and Article 52(1)(b) of Regulation No 207/2009 pursue different objectives and that the first article is not a special provision which takes precedence over the second article. In Coorstek’s submission, when assessing bad faith, within the meaning of Article 52(1)(b), only the applicant’s conduct matters and not the intrinsic qualities of the sign at issue. Moreover, given that bad faith must be assessed on the date the application for registration of the mark was filed, the fact that a monopoly over the sign at issue does not actually allow for the protection of the technical solution is irrelevant, where the applicant believed that it would allow for such protection, and only the applicant’s intention is to be taken into account.
19 The referring court notes that there are differences of interpretation between the cour d’appel de Paris (Court of Appeal, Paris) and the Oberlandesgericht Stuttgart (Higher Regional Court, Stuttgart, Germany), which both ruled on the issue of the invalidity of the contested marks. Those different interpretations concerned, in particular, the relationship between the absolute grounds for refusal set out in Article 7 of Regulation No 207/2009 and the concept of bad faith which constitutes an absolute ground for invalidity, laid down in Article 52(1)(b) of that regulation.
20 In those circumstances, the Cour de cassation (Court of Cassation) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:
21 Following the delivery of the Advocate General’s Opinion, CeramTec, by document lodged at the Court Registry on 24 February 2025, applied for the oral part of the procedure to be reopened, pursuant to Article 83 of the Rules of Procedure of the Court.
22 In accordance with that provision, the Court may at any time, after hearing the Advocate General, order the reopening of the oral part of the procedure, in particular if it considers that it lacks sufficient information, or where a party has, after the close of that part of the procedure, submitted a new fact which is of such a nature as to be a decisive factor for the decision of the Court, or where the case must be decided on the basis of an argument which has not been debated.
23 In support of its application, CeramTec submits that the Advocate General’s Opinion does not address either the particular features or the complexity of the facts of the dispute in the main proceedings, that that Opinion does not take account of the objectives pursued by the ground of invalidity based on bad faith, that the examination of the case-law confirms the requirement for an objective risk that competition will be harmed and that that Opinion lacks any indication of legitimate commercial interest.
24 It should be observed that, under the second paragraph of Article 252 TFEU, it is the duty of the Advocate General, acting with complete impartiality and independence, to make, in open court, reasoned submissions on cases which, in accordance with the Statute of the Court of Justice of the European Union, require his or her involvement. The Court is not bound either by the Advocate General’s Opinion or by the reasoning which led thereto. It should also be borne in mind that neither the Statute of the Court of Justice of the European Union nor the Rules of Procedure make provision for the parties to the main proceedings and the interested persons referred to in Article 23 of that statute to respond to an Advocate General’s Opinion. As a consequence, the fact that a party to the main proceedings or an interested person disagrees with the Advocate General’s Opinion, irrespective of the questions examined in the Opinion, cannot in itself constitute grounds justifying the reopening of the oral procedure (see judgment of 4 October 2024, Herbaria Kräuterparadies II, C‑240/23, EU:C:2024:852, paragraphs 40 and 41 and the case-law cited).
25 In the present case, it is apparent from the request to reopen the oral part of the procedure that, by that request, CeramTec is in fact seeking to express its disagreement with the legal analysis carried out by the Advocate General. As is apparent from Article 83 of the Rules of Procedure and the case-law cited in the preceding paragraph of the present judgment, such a ground does not appear among those which may justify the reopening of the oral part of a procedure. Furthermore, the interested persons who participated in the present proceedings have been able to set out, during both the written and oral stages of the procedure, the matters of law which they considered relevant to enable the Court to interpret the provisions of EU law which are the subject of the questions referred by the national court. In that respect, the Court considers that it has all the information necessary to rule on the present request for a preliminary ruling and that none of the matters raised by CeramTec in support of its application to reopen the oral part of the procedure justifies such a reopening pursuant to Article 83 of the Rules of Procedure.
26 In those circumstances, there is no need to order the reopening of the oral part of the procedure.
27 As a preliminary point, it should be noted that, although the referring court has formulated the first question as relating to the relationship between the absolute ground for invalidity laid down in Article 52(1)(b) of Regulation No 207/2009 and that provided for in Article 52(1)(a) of that regulation, read in conjunction with Article 7(1) of that regulation, it is apparent from the request for a preliminary ruling that, among the absolute grounds for refusal of registration laid down in Article 7(1), only the ground laid down in Article 7(1)(e)(ii) of that regulation is referred to in the dispute in the main proceedings.
28 In those circumstances, the view must be taken that, by its first question, the referring court asks, in essence, whether Article 52(1) of Regulation No 207/2009 must be interpreted as meaning that the absolute ground for invalidity laid down in Article 52(1)(a) of that regulation, read in conjunction with Article 7(1)(e)(ii) of that regulation, and the absolute ground for invalidity laid down in Article 52(1)(b) of that regulation are autonomous and mutually exclusive.
29 Under Article 52(1)(a) of Regulation No 207/2009, an EU trade mark is to be declared invalid in the case where that mark has been registered contrary to the provisions of Article 7 of that regulation. Under Article 7(1)(e)(ii) of that regulation, signs which consist exclusively of the shape of goods which is necessary to obtain a technical result are to be refused registration.
30 Article 52(1)(b) of that regulation provides that an EU trade mark will be declared invalid where the applicant was acting in bad faith when he or she filed the application for registration of that trade mark.
31 In order to answer the first question, it is necessary to examine in turn whether the absolute ground for invalidity laid down in Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(e)(ii) of that regulation, and the absolute ground for invalidity laid down in Article 52(1)(b) of that regulation (‘the two absolute grounds for invalidity’), are independent and whether those two absolute grounds for invalidity are mutually exclusive.
32 In the first place, it is necessary to address the question whether the two absolute grounds for invalidity are autonomous, in the sense that, in order to declare a trade mark invalid on the ground of bad faith on the part of the applicant on the basis of Article 52(1)(b), it is not necessary to verify first the existence of the absolute ground for refusal of registration laid down in Article 7(1)(e)(ii).
33 According to settled case-law, the interpretation of a provision of EU law requires account to be taken not only of its terms, but also of the context in which it is set and the objectives and purpose pursued by the act of which it forms part (see, to that effect, judgments of 17 November 1983, Merck, 292/82, EU:C:1983:335, paragraph 12, and of 11 January 2024, Inditex, C‑361/22, EU:C:2024:17, paragraph 43, and the case-law cited).
34 It is apparent from the wording of Article 52(1) of Regulation No 207/2009 that each of those two causes is set out in a separate point, namely points (a) and (b), which are separated by a semi-colon, reflecting the intention of the EU legislature to distinguish between them. Furthermore, Article 52(1) does not contain, either in its introductory sentence or in the list which follows, expressions indicating that the two absolute grounds for invalidity must be examined in any order of priority in relation to each other.
35 That literal interpretation of Article 52(1) of Regulation No 207/2009 is supported both by the context of that provision and by the objectives it pursues.
36 As regards that context, it should be noted that, in Article 52(1), the ground for invalidity provided for in point (a) refers, unlike the one provided for in point (b), to the absolute grounds for refusal of registration set out in Article 7 of Regulation No 207/2009, and must be read and interpreted in conjunction with that article.
37 Each of the grounds for refusal of registration listed in Article 7(1) of Regulation No 207/2009 is independent of the others and requires separate examination (see, to that effect and by analogy, judgment of 16 September 2015, Société des Produits Nestlé, C‑215/14, EU:C:2015:604, paragraph 46), so that Article 52(1)(a) of that regulation itself refers to absolute grounds for invalidity that are autonomous from each other, and each has its own scope.
38 Consequently, such autonomy must, a fortiori, be recognised between the ground for invalidity provided for in Article 52(1)(a) of that regulation and the one provided for in Article 52(1)(b) of that regulation.
39 Furthermore, as the Advocate General stated, in essence, in point 34 of his Opinion, although, as a whole, Article 52(1) of Regulation No 207/2009 provides an exhaustive list of the absolute grounds for invalidity of an EU trade mark, each of the absolute grounds for invalidity it refers to is different in nature. The one provided for in point (a) applies only in the cases exhaustively listed in Article 7(1) of that regulation, whereas the one provided for in point (b) refers to the concept of ‘bad faith’, which may apply in an indeterminate number of situations.
40 As regards the objectives pursued by those absolute grounds for invalidity, the latter share the general objective pursued by the EU trade mark rules, which is to contribute to undistorted competition in the European Union. In that regard, as is apparent in particular from recital 2 of Regulation No 207/2009, the objective of that regulation is to establish and ensure the functioning of the internal market. In that context, the EU rules on trade marks are aimed at ensuring that each undertaking may, in order to attract and retain customers by the quality of its goods or services, be able to have registered as trade marks signs which enable the consumer, without any possibility of confusion, to distinguish its goods or services from others which have a different origin (judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 45 and the case-law cited).
41 However, the absolute grounds for invalidity referred to in Article 52(1) of Regulation No 207/2009 have different purposes.
42 On the one hand, the objective of the absolute ground for invalidity laid down in Article 52(1)(a) of Regulation No 207/2009 is to invalidate marks which have been registered despite the fact that they are caught by one or more absolute grounds for refusal laid down in Article 7(1) of that regulation and are, therefore, unsuitable for registration, since they cannot perform their functions as a trade mark. That ground for invalidity censures a defect in the trade mark itself and is intended to protect the public interest underlying those absolute grounds for refusal.
43 As regards, in particular, the absolute ground for refusal set out in Article 7(1)(e)(ii) of Regulation No 207/2009, its underlying purpose is to prevent the trade mark right from granting an undertaking a monopoly on technical solutions or functional features of a product which a user is likely to seek in the products of competitors. That ground is thus intended to prevent the protection afforded by trade mark law from being extended, beyond signs which serve to distinguish a product or service from those offered by competitors, so as to form an obstacle preventing competitors from freely offering for sale products incorporating such technical solutions or functional characteristics in competition with the proprietor of the trade mark (see, by analogy, judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 43, and of 23 April 2020, Gömböc, C‑237/19, EU:C:2020:296, paragraph 25 and the case-law cited). The aim is to prevent the exclusive and permanent right conferred by a trade mark from serving to extend indefinitely the life of other rights which the EU legislature has sought to make subject to limited periods (judgment of 16 September 2015, Société des Produits Nestlé, C‑215/14, EU:C:2015:604, paragraph 45).
44 As the Advocate General observed, in essence, in point 37 of his Opinion, that article, in accordance with the case-law, thus strikes a balance between two requirements, namely, first, that of preventing the protection of a patented technical solution from being perpetuated beyond the expiry of the patent and, second, that of limiting unsuitability for registration only to trade marks that would actually impede the use of a technical solution by other undertakings (see, to that effect, judgment of 14 September 2010, Lego Juris v OHIM, (C‑48/09 P, EU:C:2010:516, paragraphs 44 to 48).
45 On the other hand, the absolute ground for invalidity set out in Article 52(1)(b) of Regulation No 207/2009, aims to ensure that economic operators intending to use the EU trade mark system compete fairly. Its purpose is therefore to penalise an inherent defect in the application for registration and not in the trade mark itself.
46 It follows from the foregoing considerations that the two absolute grounds for invalidity are independent, in the sense that, in order to declare the mark at issue invalid on the ground of bad faith on the part of the applicant on the basis of Article 52(1)(b) of Regulation No 207/2009, it is not necessary first to verify the existence of one of the absolute grounds for refusal of registration laid down in Article 7 of that regulation, to which Article 52(1)(a) refers. Thus, classification as bad faith does not require a finding that the sign at issue also consists exclusively of the shape of goods which is necessary to obtain a technical result, within the meaning of Article 7(1)(e)(ii) of that regulation. The opposite is equally true because, in order to find that the sign consists exclusively of the shape of goods which is necessary to obtain a technical result, it is not necessary to establish bad faith on the part of the applicant.
47 In the second place, it is necessary to examine whether the absolute grounds for invalidity referred to in Article 52(1) of Regulation No 207/2009 are mutually exclusive, in that the application of one of those two grounds excludes the application of the other.
48 In that regard, it should be noted that the wording of Article 52(1) of Regulation No 207/2009 contains nothing, either in its introductory sentence or in points (a) and (b) thereof, to suggest that the grounds for invalidity mentioned in those paragraphs are mutually exclusive.
49 Furthermore, the provisions of Regulation No 207/2009 do not exclude an EU trade mark from being declared invalid on the basis of the absolute grounds for invalidity set out in Article 52(1)(a) and (b) of Regulation No 207/2009. It is true that, when hearing an application for a declaration of invalidity of a trade mark based on those grounds, the court may consider it appropriate, depending on the particular circumstances of the case, to confine itself to analysing one of those grounds. If it is well founded, it is no longer necessary to examine the other ground in order to declare the mark invalid. However, no provision of Regulation No 207/2009 prevents it from also analysing that other ground.
50 It follows from the foregoing that the absolute grounds for invalidity referred to in Article 52(1) of Regulation No 207/2009 are not mutually exclusive.
51 In the light of all the foregoing considerations, the answer to the first question is that Article 52(1) of Regulation No 207/2009 must be interpreted as meaning that the absolute ground for invalidity laid down in Article 52(1)(a) of that regulation, read in conjunction with Article 7(1)(e)(ii) of that regulation, and the absolute ground for invalidity laid down in Article 52(1)(b) of that regulation are autonomous, but not mutually exclusive.
52 By its second question, the referring court asks, in essence, whether Article 52(1)(b) of Regulation No 207/2009 must be interpreted as meaning that bad faith on the part of the applicant for registration of a sign as a trade mark may, if that registration was sought following the expiry of a patent, be substantiated solely on the basis of the opinion of that applicant as to the suitability of that sign for expressing the technical solution previously protected by that patent, irrespective of whether that sign consists exclusively of the shape of goods which is necessary to obtain a technical result, within the meaning of Article 7(1)(e)(ii) of that regulation.
53 As is apparent from the case-law of the Court, since the concept of ‘bad faith’ in Article 52(1)(b) of Regulation No 207/2009 is not defined by that regulation, the meaning and scope of that concept must be determined by considering its usual meaning in everyday language, while also taking into account the context in which that concept occurs and the objectives pursued by that regulation (judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraphs 43 and 44 and the case-law cited).
54 In accordance with its usual meaning in everyday language, the concept of ‘bad faith’ presupposes the presence of a dishonest state of mind or intention. Moreover, that concept must be understood in the context of trade mark law, which is that of the course of trade. In that regard, Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), Regulation No 207/2009 and Regulation 2017/1001, which were adopted successively, have the same objective, namely the establishment and functioning of the internal market.
55 As was pointed out in paragraph 40 above, the rules on the EU trade mark are aimed, in particular, at contributing to the system of undistorted competition in the European Union, in which each undertaking must, in order to attract and retain customers by the quality of its goods or services, be able to have registered as trade marks signs which enable the consumer, without any possibility of confusion, to distinguish those goods or services from others which have a different origin (judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 45 and the case-law cited).
56 Consequently, the absolute ground for invalidity referred to in Article 52(1)(b) of Regulation No 207/2009 applies where it is apparent from relevant and consistent indicia that the proprietor of an EU trade mark has filed the application for registration of that mark not with the aim of engaging fairly in competition but with the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties, or with the intention of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark, in particular the essential function of indicating origin recalled in the preceding paragraph (judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 46).
57 The intention of an applicant for a trade mark is a subjective factor which must, however, be determined objectively by the competent administrative or judicial authorities. Consequently, any claim of bad faith must be the subject of an overall assessment, taking into account all of the factual circumstances relevant to the particular case. It is only in that manner that a claim of bad faith can be assessed objectively (judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 47 and the case-law cited).
58 In that regard, it should be noted that it is not apparent from the wording of Article 52(1)(b) of Regulation No 207/2009 that, in order to assess whether the applicant was acting in bad faith, it is necessary to disregard factual circumstances which contribute or could contribute to characterising the absolute ground for invalidity laid down in Article 52(1)(a) of that regulation, read in conjunction with Article 7(1)(e)(ii) of that regulation.
59 It is already clear from the Court’s case-law that factors which, moreover, might contribute to characterising a relative ground for refusal of registration may be relevant for the purposes of classifying the applicant’s bad faith within the meaning of Article 52(1)(b) of Regulation No 207/2009, without the characterisation of bad faith in connection with a relative ground for refusal of registration requiring an examination of whether, in addition, that ground was fully satisfied (see, by analogy, judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraphs 54 and 55 and the case-law cited).
60 Similarly, the view must be taken that the fact that the applicant has attempted to prolong the monopoly on a technical solution previously protected by a patent may be taken into consideration in order to assess whether there was bad faith on the part of the applicant. The applicant’s opinion as to the suitability of the sign, in respect of which registration as a trade mark is sought, for expressing, in whole or in part, that technical solution is included - but cannot be the only one - among the factors capable of substantiating the existence of an intention, which is unrelated to the functions of the trade mark, of preventing competitors from entering the market which the applicant has dominated as a result of its patent. That view may form part of the relevant and consistent indicia that the application for registration was made, not with the aim of engaging fairly in competition, but with an intention that is inconsistent with honest practices in the course of trade.
61 That possibility exists both where the relevant factual circumstances of the case make it possible to fully characterise the absolute ground for refusal of registration laid down in Article 7(1)(e)(ii) of Regulation No 207/2009 and where those circumstances are insufficient in that regard, since, as is apparent from the answer to the first question, the two absolute grounds for invalidity are autonomous and are not mutually exclusive.
62 Consequently, bad faith on the part of the applicant within the meaning of Article 52(1)(b) of Regulation No 207/2009 may be established by taking into account factors that may be accepted in the context of the analysis of the absolute ground for refusal of registration referred to in Article 7(1)(e)(ii) of that regulation, without it necessarily being found that the sign at issue consists exclusively of the shape of goods which is necessary to obtain a technical result.
63 That being said, in order to assess an allegation of bad faith, it is important to establish the actual intention of the applicant on the basis of all the relevant factual circumstances. Those documents, in a situation such as the one in the main proceedings, also include, as the Advocate General stated, in essence, in point 57 of his Opinion, the nature of the contested mark, the origin of the sign at issue and its use since its creation, the scope of the expired patent, the commercial rationale underlying the filing of the application for registration of the contested mark and the chronology of events characterising that filing.
64 Lastly, given that, under Article 99(1) of Regulation No 207/2009, the EU trade mark enjoys a presumption of validity, it falls to the applicant for a declaration of invalidity who intends to rely on the ground referred to in Article 52(1)(b) of Regulation No 207/2009 to adduce, for the purposes of establishing bad faith when the application for registration was filed, the relevant and consistent indicia referred to in the case-law set out in paragraph 56 above. In such a case, it is then for the applicant for registration to establish, by providing plausible explanations concerning the objectives and the commercial rationale pursued, that that registration formed part of a legitimate business strategy. In that regard, it should be noted that, as the Advocate General observed, in essence, in point 58 of his Opinion, the mere fact that a mark registered in bad faith fulfils the specific functions of a trade mark and, in particular, the function of indicating origin does not, in itself, preclude a declaration of its invalidity. As is also apparent from that case-law, a trade mark fulfilling those functions must nevertheless be declared invalid if its registration was applied for with the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties.
65 In the light of all the foregoing considerations, the answer to the second question is that Article 52(1)(b) of Regulation No 207/2009 must be interpreted as meaning that bad faith on the part of the applicant for registration of a sign as a trade mark may, if that registration was sought following the expiry of a patent, be substantiated inter alia on the basis of the opinion of that applicant as to the suitability of that sign for expressing fully or partially the technical solution protected by that patent, irrespective of whether that sign consists exclusively of the shape of goods which is necessary to obtain a technical result, within the meaning of Article 7(1)(e)(ii) of that regulation. The relevant circumstances for assessing whether there was bad faith on the part of the applicant also include the nature of the contested mark, the origin of the sign at issue and its use since its creation, the scope of the expired patent, the commercial rationale underlying the filing of the application for registration of the contested mark and the chronology of events characterising that filing.
66 By its third question, the referring court asks, in essence, whether Article 52(1)(b) of Regulation No 207/2009 must be interpreted as meaning that the applicant’s bad faith may be assessed on the basis of circumstances arising after the filing of the application for registration of the mark at issue.
67 It follows from the wording of Article 52(1)(b) of Regulation No 207/2009 that a trade mark is to be declared invalid where the trade mark applicant was acting in bad faith when it filed the application for registration of the trade mark.
68 It is thus apparent from that provision that the relevant time for determining whether there was bad faith on the part of the applicant is the time of filing the application for registration (judgments of 11 June 2009, Chocoladefabriken Lindt & Sprüngli, C‑529/07, EU:C:2009:361, paragraph 35, and of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 59).
69 As was pointed out in paragraph 56 above, the absolute ground for invalidity referred to in Article 52(1)(b) of Regulation No 207/2009 applies where it is apparent from relevant and consistent indicia that the proprietor of an EU trade mark filed the application for registration of that mark not with the aim of engaging fairly in competition but with the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties, or with the intention of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark, in particular the essential function of indicating origin.
70 In the context of the overall assessment of whether the applicant acted in bad faith, account must be taken of all of the relevant factual circumstances as they existed at the time the application was lodged (judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 59).
71 It follows that that assessment must be based on any evidence that enables the court to be informed of the applicant’s intention at the time of filing the application for registration of the mark at issue. Circumstances, even after the filing of that application for registration, may serve as indicia of the applicant’s intention at that time.
72 By contrast, evidence of which the applicant became aware only after the filing of the application for registration of the mark at issue is not such as to alter the applicant’s perception at the time of filing.
73 In the present case, the fact, which it is for the referring court to verify, that CeramTec discovered only after that filing that the inclusion of chromium oxide in its goods had no technical effect cannot be relevant for the purposes of establishing a posteriori a perception on the part of CeramTec that did not exist at the time of filing.
74 In the light of all the foregoing considerations, the answer to the third question is that Article 52(1)(b) of Regulation No 207/2009 must be interpreted as meaning that the applicant’s bad faith may not be assessed on the basis of circumstances arising after the filing of the application for registration of the mark at issue.
75 Since these proceedings are, for the parties to the main proceedings, a step in the action pending before the referring court, the decision on costs is a matter for that court. Costs incurred in submitting observations to the Court, other than the costs of those parties, are not recoverable. 1. Article 52(1) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark 2. Article 52(1)(b) of Regulation No 207/2009 3. Article 52(1)(b) of Regulation No 207/2009