Recent Decisions by the CJEU and the BGH: A Major Turning Point Regarding Bad Faith in Trademark Law

Two recent decisions—the CJEU’s ruling on June 19, 2025, in CeramTec (C-17/24) and the BGH’s ruling on September 11, 2025, in Testarossa—mark a major turning point in the European understanding of bad faith in trademark matters. These decisions are part of a trend that began with Lindt (CJEU, June 11, 2009) and continued with Koton (CJEU, September 12, 2019) and Sky (CJEU, January 29, 2020).

⚖️ The CeramTec Judgment

The CeramTec judgment (CJEU, June 19, 2025) establishes bad faith as an independent and general ground for invalidity, distinct from the objective grounds set forth in Article 7 of the Regulation. It affirms that it is the applicant’s intent, and not the nature of the sign alone, that determines the legality of the application.

⚖️ The Testarossa judgment

The Testarossa judgment (BGH, September 11, 2025) clarifies the objective and method of this assessment, requiring proof of an intention to harm or exploit trademark rights for purposes unrelated to their essential function of indicating origin.

🔹 The contribution of the CeramTec judgment

1️⃣ Clarification of grounds for invalidity

The CJEU had to clarify the relationship between:

• objective invalidity, based on the characteristics of the sign (Art. 52(1)(a) and Art. 7(1)(e)(ii) of Regulation 207/2009),

• and subjective invalidity, linked to the applicant’s bad faith (Art. 52(1)(b)).

While the Paris Court of Appeal considered these grounds to be independent but mutually exclusive—to prevent bad faith from offsetting the lack of evidence for a technical ground—German courts accepted a cumulative interpretation. The CJEU subsequently ruled that the two grounds are independent but not mutually exclusive. The court may therefore base invalidity on either one, or on both cumulatively. This independence establishes bad faith as a standalone ground for invalidity, independent of the conditions of Article 7.

2️⃣ Intent as the central criterion

The Court took a decisive step: even if the sign has no technical effect, bad faith is established if the applicant believed that they were protecting an outdated technical solution. What matters is not the nature of the sign, but the intent to circumvent the purpose of trademark law. Bad faith is assessed as of the filing date, in light of objective evidence: prior use, economic logic, chronology of events.

📌 This development has two effects:

• it dematerializes bad faith: intent is sufficient, even without a concrete effect;

• it universalizes the grounds: any strategy without a legitimate purpose can be reclassified.

🔹 The contribution of the Testarossa judgment

1️⃣ The German Approach: An Extension of CeramTec

The Bundesgerichtshof (BGH), in reviewing the Testarossa case, reiterates the principles established by the CJEU:

• bad faith is subjective, assessed at the time of filing,

• determined on the basis of objective evidence,

• and interpreted in light of honest commercial practices.

However, the BGH goes further by structuring the analysis and formalizing the evidence.

2️⃣ Two forms of bad faith

The BGH distinguishes between:

🔸 relational bad faith: a filing aimed at blocking or parasitizing a third party (for example, a trademark identical to a well-known sign);

🔸 structural bad faith: an application lacking legitimate economic rationale, being purely defensive or speculative.

Bad faith is thus defined as an intent to cause harm or a desire to obtain an exclusive right unrelated to the function of the trademark (indication of origin).

3️⃣ A balanced evidentiary regime

The BGH establishes a two-step mechanism:

• the party seeking invalidation must provide objective and consistent evidence;

• once this presumption is established, the owner must justify the economic rationale for their application.

This approach transposes CeramTec into German law (MarkenG § 8 Abs. 2 Nr. 14, 50 Abs. 1) while ensuring a balance between rigor and legal certainty.

The distinction between:

🇫🇷 a more formal French interpretation, focused on the sign, and

🇩🇪 a more subjective German interpretation, focused on the objective of the application,

is now beginning to fade.

Conclusion

These decisions mark a significant shift in the European legal landscape regarding bad faith in trademark matters. They underscore the importance of intent and pave the way for a broader interpretation of grounds for invalidity. As experts in intellectual property law, we are ready to assist you in understanding and applying these new standards. We offer in-depth Franco-German expertise in intellectual property, data, and digital law. Our legal support is bilingual and intercultural, designed for companies and creators with international operations, particularly those with Franco-German activities. Whether you are aiming to expand into the German-speaking market or are facing cross-border litigation, our mission is to protect and defend your creations and innovations throughout Europe and beyond.

Image: ChatGPT

For more information, please feel free to contact us!