Official Journal of the European Union

C 225/36

(Case C-320/12) (<span class="super">1</span>)

(Approximation of laws - Directive 2008/95/EC - Article 4(4)(g) - Trade marks - Conditions for obtaining and continuing to hold a trade mark - Refusal of registration or invalidation - Concept of ‘bad faith’ of the applicant - Whether the applicant knows of the existence of a foreign mark)

2013/C 225/62

Language of the case: Danish

Referring court

Parties to the main proceedings

Applicant: Malaysia Dairy Industries Pte. Ltd

Defendant: Ankenævnet for Patenter og Varemærker

Re:

Request for a preliminary ruling — Højesteret — Interpretation of Article 4(4)(g) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25) — Refusal of registration or invalidity of a trade mark — Concept of bad faith — Applicant who knew or should have known of a foreign trade mark when filing the application for registration — Cancellation of the registration of a plastic milk bottle as a trade mark on the ground that the applicant knew at the time of filing his application of the earlier similar mark used abroad by a competing company

Operative part of the judgment

1.Article 4(4)(g) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that the concept of ‘bad faith’, within the meaning of that provision, is an autonomous concept of European Union law which must be given a uniform interpretation in the European Union.

2.Article 4(4)(g) of Directive 2008/95 must be interpreted as meaning that, in order to permit the conclusion that the person making the application for registration of a trade mark is acting in bad faith within the meaning of that provision, it is necessary to take into consideration all the relevant factors specific to the particular case which pertained at the time of filing the application for registration. The fact that the person making that application knows or should know that a third party is using a mark abroad at the time of filing his application which is liable to be confused with the mark whose registration has been applied for is not sufficient, in itself, to permit the conclusion that the person making that application is acting in bad faith within the meaning of that provision.

3.Article 4(4)(g) of Directive 2008/95 must be interpreted as meaning that it does not allow Member States to introduce a system of specific protection of foreign marks which differs from the system established by that provision and which is based on the fact that the person making the application for registration of a mark knew or should have known of a foreign mark.

(<span class="super">1</span>) OJ C 258, 25.8.2012.