Malaysia Dairy Industries Pte. Ltd v Ankenavnet for Patenter og Varemarker [2013] EUECJ C-320/12 (27 June 2013)

The concept of "bad faith" in trade mark law is notoriously slippery, and in my experience unlikely to help much even in some pretty egregious factual situations. According to the Court of Justice last week in Malaysia Dairy Industries Pte. Ltd v Ankenavnet for Patenter og Varemarker [2013] EUECJ C-320/12 (27 June 2013) 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 in the following way ...

• 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;
• 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; and
• Member States may not introduce a system of specific protection of foreign marks which differs from the system established by the directive and 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.

I hope I can be forgiven for only slightly paraphrasing the last few paragraphs of the judgment: it tells you what you need to know. There is a lot of doubtful, if not out-and-out bad, faith about in the trade mark system, and this doesn't look as if it is going to help a lot - although like all utterances of the Court of Justice it is insulated from the facts, and when national courts come to apply the interpretation it might turn out to be useful in dealing with this particular problem.

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