The fighting Bunny

Stefano Sandri

The chocolate bunny represents a big business for Lindt . Since 2001 Lindt registered a shape Community trademark and on its basis sued an Austrian firm, Franz Hauswirth GmbH, for counterfeiting .

An easy case, should you assess only the confusingly similarity between the two marks. The problem raised to the extent that the defendant counterclaimed the nullity of the registration of Lindt on the ground of Article 51(1)(b), RMC . Pursuant this rule, a Community trade mark shall be declared invalid where the applicant was acting in bad faith when he filed the application for the trade mark.

What does it mean bad faith?. The counterfeiting proceedings were suspended and the question remitted to the Court of justice (C 529/07, Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH) who said that national court must take into consideration all the relevant factors specific to the particular case, in particular the fact that the applicant knows or must know that a third party is using, in at least one Member State, an identical or similar sign for an identical or similar product, the applicant’s intention to prevent that third party from continuing to use such a sign; and the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought.

It seems that in the ECJ’ view all the three criteria must concur. The real question, however, is that there are so many other pertinent circumstances to taking care of (some of them are mentioned in the grounds of the judgement), that in practice the Court remit to the National judge the final evaluation, on a case by case basis, of when the bad faith of the applicant may occur.

It’s true that “like a banker, bad faith is no doubt easier to recognise than to define”, although “I do not suggest that bankers and bad faith have anything else in common”, as pointed out by the Advocate General Sharpston. The Court, however, was invested for the first time on the subject issue and missed the chance to say something more than 'bad faith must be decided case by case'.