Be aware: The following practice is not authorised (at least for EU trademarks)
Re-filing identical marks a few years after the first filing with a wider list of goods and services to avoid having to prove the use of the brand at the end of the five-year grace period.
(Decision of one of the EUIPO's Boards of Appeal (Case number: R1849/2017-2): partial invalidation for bad faith).
Which requirements for a finding of bad faith?
On 12 September 2019, the Court of Justice of the European Union ("CJEU") has decided in its case C 104/18t that when seeking a declaration of invalidity on the grounds of bad faith, there is no need for the applicant to have similar/identical goods and services.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
