Abusive Trade Mark Filings: Some Recent Applications of the Concept of Bad Faith in the Case Law of the Court of Justice and General Court

This article discusses bad faith as a ground for trade mark invalidation under European Union law in view of the recent jurisprudence of the Court of Justice and General Court. The author analyses various cases of trade mark filings recently challenged before courts in Europe which may be qualified as made in bad faith due to an attempt to abuse some of the rules governing trade mark law. The author first discusses the famous SkyKick judgment (case C-371/18) of the Court of Justice, concerning very broad specifications of goods or services, including the central question of the importance of the intention to use the mark, and possible implementation of the judgment by the courts. Then the study touches upon the issue of repeat applications and carries out an assessment of the Monopoly judgment (case T-663/19) rendered by the General Court. Finally, the paper discusses the application of the bad faith ground to the filings made for so-called "historical" (or "vintage") trade marks, namely marks previously registered by third parties that still enjoy some reputation; this issue was recently addressed by the General Court in Nehera (case T-250/21). In view of the developments of the case law applying the concept of bad faith, there is arguably the need to interpret and implement this ground for invalidity taking into account the whole trade mark system, to ensure compliance with its rules and not to question the rationale of other mechanisms governing trade mark law.