“… 2. Bad faith is an autonomous concept of EU trade mark law which must be given a uniform interpretation in the EU: Malaysia Dairy Industries at [29]. 3. The concept of bad faith presupposes the existence of a dishonest state of mind or intention, but dishonesty is to be understood in the context of trade mark law, i.e. the course of trade and having regard to the objectives of the law namely the establishment and functioning of the internal market, contributing to the system of undistorted competition in the Union, in which each undertaking must, in order to attract and retain customers by the quality of its goods or services, be able to have registered as trade marks signs which enable the consumer, without any possibility of confusion, to distinguish those goods or services from others which have a different origin: Lindt at [45]; Koton Magazacilik at [45]. 4. The concept of bad faith, so understood, relates to a subjective motivation on the part of the trade mark applicant, namely a dishonest intention or other sinister motive. It involves conduct which departs from accepted standards of ethical behaviour or honest commercial and business practices: Hasbro at [41]. 5. The date for assessment of bad faith is the time of filing the application: Lindt at [35]. 6. It is for the party alleging bad faith to prove it: good faith is presumed until the contrary is proved: Pelikan at [21] and [40]. 7. Where the court or tribunal finds that the objective circumstances of a particular case raise a rebuttable presumption of lack of good faith, it is for the applicant to provide a plausible explanation of the objectives and commercial logic pursued by the application: Hasbro at [42]. 8. Whether the applicant was acting in bad faith must be the subject of an overall assessment, taking into account all the factors relevant to the particular case: Lindt at [37]. 9. For that purpose it is necessary to examine the applicant's intention at the time the mark was filed, which is a subjective factor which must be determined by reference to the objective circumstances of the particular case: Lindt at [41] – [42]. 10. Even where there exist objective indicia pointing towards bad faith, however, it cannot be excluded that the applicant's objective was in pursuit of a legitimate objective, such as excluding copyists: Lindt at [49]. 11. Bad faith can be established even in cases where no third party is specifically targeted, if the applicant's intention was to obtain the mark for purposes other than those falling within the functions of a trade mark: Koton Magazacilik at [46]. 12. It is relevant to consider the extent of the reputation enjoyed by the sign at the time when the application was filed: the extent of that reputation may justify the applicant's interest in seeking wider legal protection for its sign: Lindt at [51] to [52]. …”
“45. While, in accordance with its usual meaning in everyday language, the concept of ‘bad faith’ presupposes the presence of a dishonest state of mind or intention, that concept must moreover be understood in the context of trade mark law, which is that of the course of trade. In that regard, Regulations No 40/94, No 207/2009 and No 2017/1001, which were adopted successively, have the same objective, namely the establishment and functioning of the internal market (see, as regards Regulation No 207/2009, judgment of27 June 2013 , Malaysia Dairy Industries, C-320/12, EU:C:2013:435, paragraph 35). The rules on the EU trade mark are aimed, in particular, at contributing to the system of undistorted competition in the Union, in which each undertaking must, in order to attract and retain customers by the quality of its goods or services, be able to have registered as trade marks signs which enable the consumer, without any possibility of confusion, to distinguish those goods or services from others which have a different origin. … 46. Consequently, the absolute ground for invalidity referred to in Article 52(1)(b) of Regulation No 207/2009 applies where it is apparent from relevant and consistent indicia that the proprietor of an EU trade mark has filed the application for registration of that mark not with the aim of engaging fairly in competition but with the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties, or with the intention of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark, in particular the essential function of indicating origin recalled in the previous paragraph of this judgment.”
“Article 51(1)(b) of Regulation No 40/94 … and Article 3(2)(d) of First Directive 89/104 must be interpreted as meaning that a trade mark application made without any intention to use the trade mark in relation to the goods and services covered by the registration constitutes bad faith, within the meaning of those provisions, if the applicant for registration of that mark had the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark.”
“76. Admittedly, the applicant for a trade mark is not required to indicate or even to know precisely, on the date on which his or her application for registration of a mark is filed or of the examination of that application, the use he or she will make of the mark applied for and he or she has a period of 5 years for beginning actual use consistent with the essential function of that trade mark … 77. However, as the Advocate General observed in point 109 of his Opinion, the registration of a trade mark by an applicant without any intention to use it in relation to the goods and services covered by that registration may constitute bad faith, where there is no rationale for the application for registration in the light of the aims referred to in Regulation No 40/94 and First Directive 89/104. Such bad faith may, however, be established only if there is objective, relevant and consistent indicia tending to show that, when the application for a trade mark was filed, the trade mark applicant had the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark.”
“A person is presumed to have acted in good faith unless the contrary is proved. An allegation of bad faith is a serious allegation which must be distinctly [pleaded and] proved. The standard of proof is the balance of probabilities, but cogent evidence is required due to the seriousness of the allegation. It is not enough to prove facts which are also consistent with good faith.”
“42. It is for the applicant for a declaration of invalidity who intends to rely on Article 52(1)(b) of Regulation No 207/2009 to prove the circumstances which make it possible to conclude that an application for registration of an EU trade mark was filed in bad faith, the good faith of the trade mark applicant being presumed until proven otherwise …. 43. Where EUIPO finds that the objective circumstances of the particular case which were relied on by the applicant for a declaration of invalidity may lead to the rebuttal of the presumption of good faith which the proprietor of the mark at issue enjoys when he or she files the application for registration of that mark, it is for the proprietor of that mark to provide plausible explanations regarding the objectives and commercial logic pursued by the application for registration of that mark. 44. The proprietor of the trade mark at issue is best placed to provide EUIPO with information regarding his or her intentions at the time of applying for registration of that mark and to provide it with evidence capable of convincing it that, in spite of the existence of objective circumstances, those intentions were legitimate ….”
“47. As regards the 1995 UK application for the Wordless mark (UK trade mark registration nos. UK2016658A, UK2016658C and UK2016658D): 47.1 The Wordless Mark is and always was a legal artifice with no corresponding mark in the real world. It has never been used by Lidl in the form appearing on the register. 47.2 Given that .. Lidl apparently devised its logo corresponding to the Mark with Text in 1987 or thereabouts, there is a reasonable inference that, at least by 1995 there was no bona fide intention (if there ever was, which is denied) to use the Wordless Mark in the form as registered. This is supported by the lack of use of that mark in the period both before and since the date of application. 47.3 It is denied that use of the Mark with Text amounts to use of the Wordless Mark, but even if it did, that would have no bearing on the bad faith nature of the application. If the Mark with Text supported the use of the Wordless Mark, then there was no need to apply for the Wordless Mark separate to that unless the purpose of the Wordless Mark application was to give Lidl wider or different protection. Lidl makes that argument in the present proceedings. 47.4 The result was an application for a Wordless Mark made solely for the purposes of deployment as a weapon in legal proceedings, not in accordance with its function of being used on goods or services to indicate the origin thereof. 48. Further or alternatively, as regards the Additional Wordless marks and the 2005 version of the Wordless Mark (UK trade mark registration no. 904746343), Tesco will contend as follows: 48.1 The Additional Wordless Marks and the 2005 version of the Wordless Mark, namely the EU marks from which those UK comparables are derived, are evergreened versions of the 1995 mark in that they duplicate coverage of various goods and services covered by the earlier mark. 48.2 There was no reason for Lidl to re-apply for the same marks and goods/services other than to avail itself of a fresh grace period during which it would not be required to show use of, in effect, the same marks. 48.3 In the circumstances, the Additional Wordless Marks and the evergreened 2005 application are probative of bad faith in relation to the marks themselves and the 1995 mark. As regards the 1995 mark, although the bad faith assessment is at the date of application, facts and matters subsequent to that date, such as evergreening, have a bearing on that assessment. The fact that Lidl considered it necessary to evergreen that 1995 mark in 2002, 2005 and 2007 is further proof of its bad faith at the date of application of the 1995 mark. 48.4. As regards the Additional Wordless Marks and the 2005 version of the Wordless Mark, paragraph 47 above is repeated. However, in addition to those matters, the fact that those applications were made in order to evergreen an earlier trade mark is itself probative of bad faith as regards those later marks. 48.5. In the premises, Lidl made applications not in accordance with the functions of a trade mark but purely to obtain exclusive rights for ulterior and illegitimate purposes. In respect of the UK comparable marks that derive from the EUTMs, because the EUTMs were applied for in bad faith, the UK comparable marks should be invalidated for the same reasons. 48.6. Pending further information and/or clarification, Tesco notes that Lidl has made yet further applications for the Wordless Mark in 2021, i.e., well after this dispute began. The said marks represent yet further attempts to evergreen the Wordless Mark in order to benefit from yet further fresh grace periods without any requirement to prove use. These applications, although they have not yet proceeded to registration, will be the subject of invalidation counterclaims should Lidl seek to introduce them here. They will in any event be opposed before the UK-IPO if they proceed to publication. At that point the UK-IPO will be invited to stay those oppositions pending the outcome of this Counterclaim. Meanwhile the fact of the 2021 evergreened applications stands as yet further evidence of bad faith regarding all prior applications for the Wordless Mark and the Additional Wordless Marks.”
“My learned friend says that you must have registered it in order to obtain a wider scope of protection. I did. That is exactly what I did and I am entitled to do so.”
“The first of the indicia on which Tesco relies in this case is that the Wordless Mark was designed as a legal weapon (a point that [counsel for Tesco] accepts overlaps with Tesco’s lack of intention to use allegation). However, whilst objective, relevant and consistent indicia of a desire to obtain exclusive rights for purposes other than those falling within the functions of a trade mark (i.e. for legal deployment) would be capable of tipping this case into the realms of bad faith, there are no such indicia here. Indeed I agree with [counsel for Lidl] that this element of Tesco’s case on bad faith is really inextricably tied to their contention that a lack of use gives rise to an inference of lack of intention to use. The allegation that the Wordless Mark is merely a legal weapon is no more than assertion. Tesco does not cite any objective basis for such contention. It cannot be sufficient on the authorities to construct an edifice of inferences based purely on an assumed/inferred lack of intention to use (which on its own is insufficient to amount to bad faith in any event).”
“Against that background …, the key question is whether Tesco’s prima facie case on this point is enough to shift the burden of proof and require a response from Lidl, such that the issue must go to trial. For the reasons identified by [counsel for Lidl], I certainly cannot see that it is. Aside from the fact that Tesco has not pleaded details as to the registration of the Mark with Text prior to 1995 and has not sought to identify the class of goods covered by it, I fail to see how the mere existence of an overlapping mark is enough, without more, to undermine the presumption of good faith.”
“91. … The first point appears to me to be little more than speculation flowing from Tesco’s case that there has been no use of the Wordless Mark. Even assuming that case to be correct, I fail to see that the mere existence of overlapping filings is enough on its own to give rise to a prima facie case of bad faith. 92. … There is nothing on the face of Tesco’s pleading to support the proposition that the re-registrations must have been bogus and made no commercial sense (see by analogy Pelikan at [46]), much less has it pleaded anything to suggest that the mere fact of those re-registrations is capable of rebutting the presumption of good faith at the time of filing of the original Wordless Mark in 1995. 93. On the subject of the excel spreadsheet illustrating the scope of the later applications for registration, I accept [counsel for Lidl’s] submissions that it is plain that although there was an overlap between the original application and the later applications, those applications were different in scope, covering different goods and services and relating to a larger geographical area (the 2002, 2005 and 2007 filings were intended to cover the EU). If Tesco intended to rely on specific points of detail arising in these applications in support of its Bad Faith Allegation it should have pleaded them. However, it has not done so. Instead [counsel for Tesco] has simply addressed me on his feet as to examples of overlapping classes etc. on which Tesco relies - to my mind this is not appropriate or sufficient in a case where bad faith is alleged. 94. As to the second point, whilst Hasbro is authority for the proposition that bad faith need not turn on the issue of non-use, here the case that is actually pleaded by Tesco appears to my mind to be obviously premised upon the alleged lack of use of the Wordless Mark. As Tesco says in its Counterclaim at 48.2, ‘there was no reason for Lidl to re-apply for the same marks and goods/services other than to avail itself of a fresh grace period during which it would not be required to show use of, in effect, the same marks’. There is no other objective, relevant or consistent indicia of bad faith on which Tesco relies in this context.”
“This registration was filed in ‘bad faith’ and was therefore registered contrary to the provisions of section 3(6) of the Act . The proprietor did not at the time of filing and does not have any intention of using the trade mark the subject of the registration either at all or alternatively for all of the goods covered by the registration. Further, the proprietor simply filed this registration in an attempt to obtain an extended yet illegitimate coverage of the descriptive word ‘kinder’ (being the German word for ‘child’). Our enquiries have revealed that this registration has not been genuinely used in the UK by the Registered Proprietor or with its consent on any of the goods for which it is registered during the past 5 years.”
“ … I believe that the hearing officer was entitled to come to the conclusion that the applicants had established a prima facie case that the registered proprietors did not have a genuine intention to use the marks in issue at the dates they were filed. He was also, in my view, entitled to come to the conclusion that the prima facie case was not answered and that the allegation was therefore made good.”
“36. In the present case, it is apparent from objective, relevant and consistent indicia that the intervener’s intention at the time when the application for registration of the contested mark was filed was not to put it to a use falling within the functions of a trade mark. 37. First, it is stated in paragraph 37 of the contested decision that it cannot be excluded that the intervener wanted to protect its clients from possible confusion between the signs TARGET PARTNERS and TARGET VENTURES and that the commercial logic behind the filing of the contested mark was the intervener’s legitimate desire to protect its distinctive name (TARGET) accompanied by the description of its venture capital services (VENTURES), in addition to its mark TARGET PARTNERS, and thus prevent any confusion among its clients. 38. However, in the specific circumstances of the present case, the fact that the intervener registered a mark in order to prevent a likelihood of confusion with another mark of which it was already the proprietor and/or in order to protect, in that connection, the element that is common to those marks is, as the applicant in essence submits, extraneous to the functions of a trade mark, in particular the essential function of indicating origin, and contributed more towards strengthening and protecting the intervener’s first mark, which was, both before and after the application for registration of the contested mark was filed, the only sign under which the intervener offered its services. 39. Second, it is clear from the intervener’s answers to the questions put to it at the hearing that the intention which gave rise to the filing of the application for registration of the contested mark was that of strengthening another mark, namely TARGET PARTNERS, since the websites ‘www.targetventures.de’ and ‘www.targetventures.com’ did nothing other than provide a means of redirection to the intervener’s main website. 40. Indeed, the intervener stated that the contested mark had been used, as it had been before it was registered, in connection with the websites in order to redirect interested consumers to its main website, entitled ‘www.targetpartners.de’, on which it offers its services. It also stated that that was the main reason for its use. According to the intervener, by using a distinctive element, namely the element ‘target’, in the domain names ‘targetventures.com’ and ‘targetventures.de’ with an element that is descriptive of venture capital services, namely the element ‘ventures’, and by providing a means of redirection to its main website, on which it offers its services under the mark TARGET PARTNERS, it intended to show the interested public that those services were also offered by Target Partners. It submitted that the reason for the registration of the contested mark was therefore that of protecting the sign TARGET used in the name of those two websites. The intervener also declared that it wished to broaden its portfolio of trade marks. 41. Given, first, that it is not disputed that the use of the sign TARGET VENTURES has been the same before and after the filing of the application for registration in respect of that sign, namely that of providing a means of redirection to the intervener’s main website ‘www.targetpartners.de’, and given, second, that it may be deduced from the intervener’s explanation at the hearing that the protection of that use was the principal reason for the application for registration of the contested mark, no information of any other planned specific use having been provided, it must be held that the intervener solely had the intention of continuing to use that mark in the same way as it had been doing before that application was filed. Consequently, the intervener filed that application not with the aim of engaging fairly in competition but with the intention of obtaining, potentially without targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark, in particular the essential function of indicating origin.”
“70. … there is no provision in the legislation relating to EU trade marks which prohibits the re-filing of an application for registration of a trade mark and that, consequently, such a filing cannot, in itself, establish that there was bad faith on the part of the trade mark applicant, unless it is coupled with other relevant evidence which is put forward by the applicant for a declaration of invalidity or EUIPO. However, it must be stated that, in the present case, it is apparent from the Board of Appeal’s findings that the applicant admitted, and even submitted, that one of the advantages justifying the filing of the contested mark was based on the fact that it would not have to furnish proof of genuine use of that mark. Such conduct cannot be held to be lawful conduct, but must be held to be contrary to the objectives of Regulation No 207/2009, to the principles governing EU trade mark law and to the rule relating to proof of use …. 94. … the applicant [Hasbro] … confines itself to claiming that the re-filing of earlier marks is a common practice without providing any evidence whatsoever in support of that claim. In any event, the fact remains that neither Regulation No 207/2009 nor the case-law provides a basis which makes it possible to rule out any bad faith on the part of the applicant on the ground that it was following a practice that was common in the industry and that it acted in accordance with advice from counsel. As the Board of Appeal correctly pointed out …, the simple fact that other companies may be using a specific filing strategy does not necessarily make that strategy legal and acceptable. Furthermore, as is stated in essence by EUIPO, it is on the basis of the circumstances of the particular case that it must be assessed whether or not such a strategy complies with Regulation No 207/2009. It is, however, apparent from what has been stated earlier that the applicant intentionally sought to circumvent a fundamental rule of EU trade mark law, namely that relating to proof of use, in order to derive an advantage therefrom to the detriment of the balance of the system resulting from that law, as established by the EU legislature. Consequently, although there is nothing to prohibit the proprietor of an EU trade mark from re-filing that mark, the applicant’s intention must be held to be contrary to the objectives of Regulation No 207/2009 (see paragraph 70 above). In the specific circumstances of the present case, the applicant cannot, in order to cast doubt on the assessment that it acted in bad faith, usefully rely, even if they were proved, either on the fact that it was common for undertakings to pursue the same trade mark filing strategy or on the fact that it had acted in accordance with advice from counsel.”