Key points
- The CJEU confirmed that a trade mark registered in bad faith may be challenged without any time limit, even if the owner of the earlier trade mark was aware of such bad faith from the application date.
- A bad-faith challenge is valid even if the owner of the earlier mark referred to a deadline to file an invalidity action in a warning letter and then let that deadline pass without taking legal action.
Background
Sánchez Romero Carvajal Jabugo SAU (SRC) owned two EU trade mark registrations in class 29 that contained the term ‘5J’ (applied for in 1999 and 2010, and registered in 2006 and 2015, respectively).
On the other side, Embutidos Monells SA (EM) owned two Spanish trade mark registrations including 5Ms and 5Ps (applied for in 2011 and 2012, respectively, and registered in 2012), also in respect of class 29.
SRC requested EM, by a warning letter of formal notice, to withdraw the trade mark registrations at issue and to cease use, stating:
EM was conscious of SRC’s reputation, due to an earlier Spanish opposition in 2012.
There was similarity between the trade marks.
An invalidity action could be brought in respect of the marks 5Ms and 5Ps before 28th February 2017 and 18th March 2017, respectively.
Then, in November 2021, SRC filed an invalidity action against EM’s trade marks before the Commercial Court, asserting bad faith. In response, EM alleged that SRC had acquiesced to the use of the registered marks and that the time limits for bringing an invalidity action had now expired, as previously stated in the warning letter of formal notice.
The CJEU preliminary ruling
In view of the controversy, the Alicante Commercial Court referred the matter to the CJEU for a preliminary ruling. It asked for clarification on:
whether a warning letter setting a deadline for taking action can give rise to a legitimate expectation that no action will be brought once the deadline has expired; and
the possible interruptive effect of an EUIPO opposition on the required successive five-year limitation period.
In its judgment of 10th July 2025, the CJEU ruled on these preliminary questions.
“Where the registration has been applied for in bad faith, the five‑year limitation period … does not apply”
The CJEU was clear in establishing that where the proprietor of an earlier trade mark has acquiesced, it shall no longer be entitled to apply for a declaration stating that the later trade mark is invalid or to challenge the use of the later trade mark in respect of the goods or services for which the later trade mark has been used, unless, crucially, the later trade mark was applied for in bad faith.
The Court specified that where the registration has been applied for in bad faith, the five-year limitation period for acquiescence does not apply. However, we should not forget that the Court also pointed out that good faith is presumed and it is for the proprietor of the earlier trade mark to prove the bad faith of the applicant, which imposes a high burden of proof.
Further, the Court referred to the fact that a warning letter setting out the relevant deadlines does not preclude the bringing of a subsequent action based on bad faith, even if the proprietor of the earlier trade mark already had at that time all the elements indicating such bad faith. Thus, it is established that invalidity on the grounds of bad faith is not subject to the five-year limitation period.
In light of this answer to the first question, the Court said that there was no need to answer the second question.
Comments
Ultimately, as stated above, a warning letter setting deadlines after which acquiescence may apply does not preclude the bringing of a subsequent action based on bad faith, even if the proprietor of the earlier trade mark already had all the elements indicating bad faith at that time. If you receive such a letter, you should not expect that the owner of the earlier mark will be bound by these dates, and that your client is safe from invalidity attacks after their expiry.
Trade marks filed in bad faith often seem to have short and difficult journeys in the EU trade mark system.
This article was first published in the November/December issue of CITMA Review, the journal of the Chartered Institute of Trade Mark Attorneys (CITMA). For more information on CITMA, please visit citma.org.uk
