Brand owners sometimes encounter unauthorised filings by third parties, such as competitors, distributors or former employees, especially before national offices where fraudulent marks may go unnoticed for years. In Sánchez Romero Carvajal Jabugo S.A.U. v Embutidos Monells S.A., the CJEU recently confirmed that, contrary to popular belief, time does nothing to legitimise such filings if they were made in bad faith. This article contains some guidance to help brand owners seeking to invalidate EU registrations on the ground of bad faith. 

Background

In the EU, a trade mark registration may be invalidated on the ground of bad faith if its application was filed not with the aim of engaging fairly in competition, but with the intention of undermining the interests of third parties or obtaining an exclusive right for purposes other than those falling within the functions of a trade mark, in particular the essential function of indicating the origin of the goods or services specified in its registration (C-104/18 P).

In the present case, M. Romero Carjaval, a Spanish private individual, is the owner of several EU registrations for the brand 5J, with the oldest one dating back to 1999. Its competitor Monells filed several Spanish marks on the brands 5Ms and 5Ps, for similar products, respectively in 2011 and 2012. 

In 2016, M. Romero Carjaval put Monells on notice to withdraw these marks and cease-and-desist from their use, with reference to a positive precedent it had previously obtained against Monell’s Spanish mark 5Cs.

Five years later, M. Romero Carjaval took action against Monells, seeking to invalidate Monells’ registrations on the ground of bad faith. 

As a defence, Monells claimed that M. Romero Carjaval had in the meantime tolerated for a period of five successive years the use of these registered marks and, hence, was no longer entitled to dispute the validity of their registrations. In so doing, Monells attempted to rely on the rule of limitation in consequence of acquiescence, which is provided for in relation to national registrations (Art. 9 EUTMD) and EU registrations (Art. 61 EUTMR).

In that context, the Alicante Commercial Court referred the case to the CJEU for a preliminary ruling, seeking to determine whether the defence of acquiescence could indeed preclude the owner of an EU trade mark from bringing such an invalidity action on the ground of bad faith.

CJEU ruling

In its decision of July 10, 2025, the CJEU gave important guidance on the interplay between the passing of time and the invalidation of registrations filed in bad faith:

1. Bad faith is an absolute ground for invalidity. Acquiescence to the use of a trade mark filed in bad faith does not limit the applicant for cancellation’s right to challenge that trade mark registration.
2. Bad faith must be established at the time of the filing of the application. The applicant’s good faith is presumed, until proven otherwise by the applicant for cancellation.
3. The applicant for cancellation may seek to invalidate a mark filed in bad faith after the deadline set in his notice letter, even if he was aware of the applicant’s bad faith at the time that letter was sent.

Takeaways

This CJEU ruling is good news for applicants for cancellation on the ground of bad faith, albeit with important caveats:

1. Registrations filed in bad faith may always be challenged. In the EU, the right to invalidate a bad faith registration cannot be time-barred.
2. Bad faith must be proven back in time. The applicant for cancellation must provide evidence of the applicant’s bad faith at the time of the filing (e.g., prior correspondence, subsequent request for compensation, etc.).
3. Fraudulent use may be terminated as well. If the applicant for cancellation proves that the registration at issue was filed in bad faith, its actual use on the market may also be challenged in court even after the five-year period of acquiescence (C-482/09 and C-452/24).

Conclusion

Bad faith does not heal overtime in the EU. Rightful brand owners may challenge the validity of registrations filed in bad faith even if they are discovered years (or decades) later. The same is true of their use on the market, which may not be legitimised by acquiescence.

The full judgement of the CJEU can be found here.