PROTECTION OF WINE NAMES BY TRADEMARK LAW 125 III.1. A Legitimate Sign at the Stage of Its Application For a trademark to be valid, it must be filed in good faith – a general principle that has been declined by special provisions. Article 59(1)(b) EUTMR has established that bad faith is an absolute ground for refusal or nullity. Therefore, bad faith is assessed at the time of the application. The grounds of bad faith apply to prevent any trademark registration that is abusive and contrary to honest commercial and business practice when the trademark was filed solely with the intent to harm, unduly appropriate the benefit of a legitimate undertaking or thwart it by claiming against it the ownership of the fraudulently registered trademark. Bad faith requires an overall assessment of the circumstances of the case likely to indicate its existence. Such circumstances could include, among others: 1) the fact that the applicant knows that a third party is using an identical or similar sign for identical or similar goods or services, capable of being confused with the sign for which registration is sought; 2) the applicant’s intention to prevent that third party from continuing to use such a sign; and 3) the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought in the European Union55. Accordingly, a case law has considered that “in the context of the overall assessment of the existence of the applicant’s bad faith, account may also be taken of the origin of the contested sign and of its use since its creation, of the commercial logic underlying the filing of the application for registration of that sign as an EU trade mark, and of the chronology of events leading up to that filing”56. Situations likely to constitute bad faith are diverse, with EUIPO having cited that bad faith is found, for instance, when it can be inferred that the purpose of the EUTM applicant is to “free-ride” on the reputation of the invalidity applicant and take advantage of that reputation57, where a EUTM owner tries to artificially extend the period of grace for non-use, for example by filing a repeat application of an earlier EUTM58. The purpose is to determine the real purpose of the commercial logic behind the applicant’s application. The existence of a direct or indirect relationship between the parties prior to the EUTM filing, for example, a pre-contractual, contractual or post-contractual relationship, is such an indicator of bad faith that it has been autonomously consecrated. Indeed, article 8(3) EUTMR states that “Upon opposition by the 55 ECJ of 11 June 2009, Chocoladefabriken Lindt, C-529/07, § 53. 56 GCEU of 23 May 2019, Ann Taylor T-3/18 and T-4/18 § 54. 57 GCEU of 14 May 2019 NEYMAR T-795/17. 58 GCEU of 13 December 2012, Pelikan T-136/11, § 27.
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