Trade Mark Applications in Bad Faith: Righting Wrong in Denmark and Why the Benelux is Next

Abstract

Trade mark grabbing. It happens a lot. Anywhere. Anytime. This article discusses the most recent developments in European Trade Mark Law for preventing cross-border trade mark grabbing. It outlines the current state of play in Europe on when right owners are able to invalidate bad faith trade mark applications on the grounds of earlier use. It discusses the recent decision of the Court of Justice of the European Union (CJEU) of 27 June 2013 in the case Malaysia Dairy v Yakult. The author holds that the CJEU was correct in finding that the implementing legislation in Denmark violates the European Trade Mark Directive. Apart from Denmark, the author also discusses the impact on the Benelux, concluding that the Benelux violates the European Trade Mark Directive. The article also explains some relevant angles on how to ensure that European Directives are properly transposed in national legislation. The article concludes with the most recent legislative changes in this field, which is likely to have a big impact on the ability for brand owners in 2014/2015 to take action against bad faith trade mark applications. Note: This is a revised version of the same article published in the Netherlands in "Berichten Industriele Eigendom" 2013 July/August p. 254-260 in honour of fellow editors mr J.L.R.A. Huydecoper and mr. P.J.M. Steinhauser. Benefitting from separate peer-review and updating, this amended version is now published in Journal of Intellectual Property Law & Practice 2014 Vol 9, Issue 2, p. 118-124.