[Editor's note] Like most countries and regions in the world, The rulings of the Court of Justice of the European Union have important guiding significance and predictive value for understanding the legal norms of the European Union. Esabaril (ELZABURU) At the beginning of each year, typical cases of the Court of Justice of the European Union in the previous year are summarized and published, And a brief review of each case, In order to help customers and partners to understand the EU intellectual property norms. Given the importance of Chinese customers and partners, We try to publish the Chinese version of typical cases on a weekly basis, It is convenient for Chinese partners to learn the latest information in a timely manner.

　　 [background]

　　2007 years 6 month 25 day, German company Outsource Professional Services Ltd. (Hereinafter referred to as "OUTSOURCE" ) Submit an application for EU trademark registration, Specify use in the No 35, 36 and 41 service-like. 2008 years 5 month 20 day, The applicant obtains the right to register the trademark (As shown in Figure 1) . 2013 years 3 month 4 day, Indian company FLATWORLD Malicious registration by the owner of the above registered trademark ( "Eu trade mark regulation (The first (EU) 2017/1001 No) " The first 59 (1) (b) article) reason, Request the EU Intellectual Property Office to invalidate the registered trademark. FLATWORLD Submit evidence that, Several consultations were held between it and the respondent, Discuss the respondent (OUTSOURCE) Use of trademark "OUTSOURCE 2 INDIA" The business of providing assistance services to other enterprises. Figure 1　　After the invalidity Department of the EU Intellectual Property Office accepts the invalid application, in 2015 years 2 month 3 Japan ruled that the disputed trademark was invalid. OUTSOURCE Objection to the conclusion of the ruling, appeal. The appeal Board rejected the conclusion of the Department of Nullification, Order to uphold the registered trademark. By analyzing the facts of the case——especially "outsource" Descriptive words in themselves, Anyone can use it freely——Etc, It can be determined that the disputing trademark owner has no intention to infringe upon the invalid applicant. The Appeals Panel also found that, Whereas the invalid applicant FLATWORLD Already in 2011 years 5 month 25 Japan successfully registered the EU trademark "OUTSOURCE 2 INDIA" (As shown in Figure 2) , Therefore, the disputed trademark has not caused any material damage. Figure 2　　2018 years 5 month 31 day, Eu general court (General Court) Make adjustments T-340/18 Number judgment, Overturning the findings of the appeal Board, Uphold the original nullification order of the Nullification Department. The general court found that the disputing trademark owner had bad faith in the registration process, Because there is a quasi-contractual relationship between the disputing trademark owner and the invalid applicant (pre-contractual relationship) , So OUTSOURCE Know or ought to know, At least in Germany, FLATWORLD Already in use "OUTSOURCE 2 INDIA" mark. In addition, The court stated that, OUTSOURCE The trademark in dispute was registered immediately after the termination of negotiations, The purpose is misappropriation "OUTSOURCE 2 INDIA" The economic potential of trademarks, Therefore, damage has been caused to the owner of the trademark. At the end of the sentence, The general court stated, As to "outsource" Whether the element itself is descriptive, It has nothing to do with examining the facts of the case and the conduct of the applicant. European Court of Justice (Court of Justice) rejected OUTSOURCE Application for appeal.

　　 [conclusion]

　　although, The European Court of Justice accepted OUTSOURCE proposed "The facts on which the ordinary court based its decision were wrong" Grounds of appeal, But the European Court of Justice agreed with the General Court's conclusions, By analyzing the objective facts of the case, It can determine that the disputing trademark owner has bad faith when submitting the trademark application——The owner of the disputed trademark is fully aware, At least in Germany the other side has used "OUTSOURCE 2 INDIA" Trademark case, Still apply for registration of disputed trademarks immediately after negotiations break down.

　　The European Court of Justice further clarified, On the basis of malicious registration and on the basis of prior use rights (And the basis of objection) The difference between filing an invalid claim. To check for malicious registration, There is no need to examine whether there is a risk of confusion between the disputed trademark and the prior used trademark, There is no need to consider the degree of similarity between trademarks, The similarity between the items of goods or services used, Or the degree of marked distinction, And so on; contrary, What needs to be examined is, Whether the applicant's action was motivated by malice.

　　 [comment]

　　2019 years, The European Court of Justice ruled on two cases involving the malicious registration of trademarks: case, and, 2019 years 9 month 12 Regulation of the day C-104/19-8P Number judgment.

　　The earliest controversial judgment of the European Court involving the ill-faith registration of a trademark was found invalid 2009 years 6 month 11 The no C-529/07 adjudication. The court's request is admissible in this case, The European Court of Justice explained "Eu trade mark regulation" The first 51 (1) (b) article (Existing ordinance 59 article) Meaning of (Elements to be considered in determining whether an applicant has acted in bad faith when filing an application for trademark registration) . These elements include:

　　 (1) The applicant knew or should have known, At least in the area of one member state, A third party is using a similar trademark which is the same as the mark to which it intends to apply or which may cause confusion; but, The European Court of Justice stated that, This element alone does not establish bad faith on the part of the applicant;

　　 (2) The applicant intentionally prevented a third party from continuing to use the relevant trademark; The European Court of Justice stated that, This subjective element should be based on the objective circumstances of specific cases——For example, whether the sole purpose of the applicant's action is to prevent the relevant third party from entering a particular market——judge. In addition, The European Court of Justice in its 2018 years 9 month 6 Day control C-488/16 P It was stated in the ruling, Proof only when the applicant filed the trademark application, Know that a third party is using the disputed trademark as a new entrant to a particular market, And the applicant submits the application, Attempts to prevent a third party from continuing to use the symbol, and "The possibility that the applicant's application for the mark is for a legitimate purpose cannot be excluded" .

　　 (3) Third party trademark, And the extent to which the registered mark is protected by law; European Court of justice, When examining this element, The actual use of each party's trademark shall be taken into account, And the nature and reputation of the mark applied for registration.

　　2013 years 6 month 27 day, The European Court of Justice approved the No C-320/12 adjudication, right "Directive of the European Parliament and of the Council on the harmonization and harmonization of trademark laws in the Member States (The first 2008/95/EC No) " The first 4 (4) (g) article (current "Eu directive on the harmonization of trademark laws in Member States (The first (EU) 2015/2436 No) " The first 4 (2) article) When the provisions are interpreted, Supplement the above principles: "malicious (bad faith) " It is the concept of EU law, There should be a uniform interpretation within the EU. According to this principle, European court of justice, Member States shall not introduce other reasons or justifications "malicious" Interpret differently; And points out in the conclusion, Member states shall not introduce "Foreign trademark" Special protection system.

　　For the last point, The European Court of Justice stated that, Existence should be examined on the basis of the full circumstances of the case "malicious" : "It cannot be based solely on the applicant's knowledge or ought to have known that the mark is being used by a third party outside a particular field, That the applicant's application was made in bad faith" .

　　As already discussed above, One of the factors that determines whether a trademark application is made in bad faith is, The applicant knows or should know within the EU territory (Or out of domain) There is a prior flag in use. The significance of this decision is that, It makes clear that bad faith is invalid, Should be different from the prior use of the relative grounds for rejection (Grounds for objection and relative invalidity) ( "Eu trade mark regulation (The first (EU) 2017/1001 No) " The first 8. 4 article) . The European Court of Justice has clarified the different principles and standards that should be applied in different situations. specifically, Judgment emphasis, Risk of judgment confusion (Facts related to confusion) Standard of, Cannot be used to determine malice——with "Eu trade mark regulation (The first (EU) 2017/1001 No) " The first 8. 4 The circumstances specified in the article are different. Judgment of malice, The subjective intention of the applicant at the time of filing the trademark application needs to be examined. This means that, To determine whether there is a malicious application, Comparison of registered trademarks and prior use marks, The principle of comparison of similarities between symbols considered in determining the risk of confusion and between specified items cannot be applied.

　　In order to "Malicious registration" Is absolutely null and void, Request to declare the disputed registered trademark invalid, There is no need to prove that goods are identical or similar to the registered trademark in dispute/The same or similar flag exists on the service item that was previously used, There is no need to prove that there may be confusion and misidentification between the disputed registered trademark and the prior use of the trademark by the relevant public.

　　compile: Liu Dan, Esabarry Legal Counsel　　source: Esabaril (ELZABURU) Intellectual property rights