Official Journal of the European Union

C 180/8

(Case C-529/07) (1)

(Three-dimensional Community trade mark - Regulation (EC) No 40/94 - Article 51(1)(b) - Criteria relevant to determining whether an applicant is ‘acting in bad faith’ when filing an application for a Community trade mark)

2009/C 180/12

Language of the case: German

Referring court

Parties to the main proceedings

Applicant: Chocoladefabriken Lindt & Sprüngli AG

Defendant: Franz Hauswirth GmbH

Re:

Reference for a preliminary ruling — Oberster Gerichtshof — Interpretation of Article 51(1)(b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) — Concept of the applicant for a mark ‘acting in bad faith’ — Trade mark application intended to prevent competitors from continuing to market similar goods which have previously acquired a certain reputation — Chocolate Easter bunnies.

Operative part of the judgment

In order to determine whether the applicant is acting in bad faith within the meaning of Article 51(1)(b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, the national court must take into consideration all the relevant factors specific to the particular case which pertained at the time of filing the application for registration of the sign as a Community trade mark, in particular:

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 capable of being confused with the sign for which registration is sought;

the applicant’s intention to prevent that third party from continuing to use such a sign; and

the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought.

(1) OJ C 37, 9.2.2008.