Case C-320/12, Malaysia Dairy Industries – an EU definition of trade mark bad faith? [judgment 2013, ECLI:EU:C:2013:435]

Can the Japanese cultured-milk drink manufacturer of Yakult stop its Malaysian competitor from registering in Denmark a similar plastic bottle as a 3D mark?

Facts

Yakult has made its cultured-milk drink since 1935. At first, the drink was sold in glass bottles. In 1965, a plastic bottle was designed and protected in law. From 1968, Yakult came to be sold in plastic bottles. Thereafter, the design of the plastic bottle was registered as a mark in countries like Japan and the Member States of the EU.

In 1977, Malaysia Dairy Industries started to make and sell its own milk drink but did so in a plastic bottle which was similar to Yakult’s. After some dispute, the two companies reached a settlement agreement in 1993 about the uses of the two companies’ bottles in various countries.

Two years after that agreement, in 1995, Malaysia Dairy Industries applied to register its plastic bottle as a 3D mark in Denmark. In 2000, the Danish Maritime and Commercial Court [Sø- og Handelsret] accepted the argument that the 3D mark contained the requisite distinctive character. However, Yakult opposed the registration of the 3D mark. In 2005, the decision to register the mark was confirmed by the Danish Patent and Trade Mark Office [Patent- og Varemærkestyrelsen], and Yakult’s opposition was refused. Yakult subsequently appealed the confirmation to the Appeal Chamber of the Danish Patent and Trade Mark Office [Ankenævnet for Patenter og Varemærker]. Its appeal was successful. The Appeal Chamber revoked the registration because Malaysia Dairy Industries had known of the use of Yakult’s mark abroad. The matter was litigated further but the revocation was upheld.

In 2009, the matter was once again appealed but this time it was to the Danish Supreme Court [Højesteret]. The dispute focused on the EU legislative framework. Article 4 of trade mark Directive 2008/95/EC sets down some of the grounds for refusing or declaring as invalid trade marks where they conflict with earlier rights. In particular, sub-section (4) provides that: ‘Any Member State may, in addition, provide that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where, and to the extent that: … (g) the trade mark is liable to be confused with a mark which was in use abroad on the filing date of the application and which is still in use there, provided that at the date of the application the applicant was acting in bad faith’.

The Directive does not define ‘bad faith’ and Malaysia Dairy Industries submitted that the Danish trade mark legislation should be interpreted in accordance with the definition of ‘bad faith’ as set out by the CJEU in its judgment in C-529/07, Chocoladefabriken Lindt & Sprüngli – even though the CJEU in that case was interpreting the ‘bad faith’ provision in what is now Article 52(1)(b) of the Community trade mark Regulation 207/2009 (codifying Council Regulation 40/94).

Questions Referred

According to the Official Journal (OJ [2012] C258/14), the Danish Supreme Court has asked:

Is the concept of bad faith in 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 […] an expression of a legal standard which may be filled out in accordance with national law, or is it a concept of European Union law which must be given a uniform interpretation throughout the European Union?

If the concept of bad faith in Article 4(4)(g) of Directive 2008/95/EC is a concept of European Union law, must the concept be understood as meaning that it may suffice that the applicant knew or should have known of the foreign mark at the time of filing the application, or is there a further requirement concerning the applicant’s subjective position in order for registration to be denied?

Can a Member State choose to introduce a specific protection of foreign marks which, in relation to the requirement of bad faith, differs from Article 4(4)(g) of Directive 2008/95/EC, for example by laying down a special requirement that the applicant knew or should have known of the foreign mark?