Judgment of the Court of Justice of 10 July 2025, Jabugo (C-322/24)
1. Facts
Sánchez Romero Carvajal holds the following EU trademarks in class 29:
For its part, Embutidos Monells holds the following Spanish national trademarks, also in class 39:
In 2016, Sánchez Romero Carvajal formally requested that Embutidos Monells relinquish its registration of the disputed trademarks and cease using the figurative trademark 5Ms. The request stated that Embutidos Monells was aware of the reputation of the 5J trademark belonging to Sánchez Romero Carvajal, as the Spanish Patent and Trademark Office (OEPM) had denied the registration of the 5Cs mark following an opposition filed by the latter.
The request also specified that Sánchez Romero Carvajal could file an action for annulment against the 5Ms and 5Ps records respectively, before February 28, 2017 and before March 18, 2017.
However, the claim for annulment before the Commercial Court No. 1 of Alicante was not filed until 2021.
Embutidos Monells invoked in its defense the statute of limitations for tolerance, alleging that the registration of the disputed trademarks dates from 2012, so Sánchez Romero Carvajal had long tolerated their use and that the deadlines indicated in the extrajudicial request had expired.
In this context, the Commercial Court No. 1 of Alicante decided to suspend the proceedings and refer a preliminary question to the CJEU regarding the effects that the indication of the deadlines in said request may produce.
Specifically, the question is whether the fact that Sánchez Romero Carvajal indicated in an extrajudicial request a deadline for exercising the action for annulment, which coincided with the five-year statute of limitations established in the Directive, should be considered a binding conduct to prevent bad faith from being alleged after that deadline to request the annulment.
Secondly, if the answer is affirmative, the question is whether the filing of an opposition by Sánchez Romero Carvajal against the registration of other subsequent European Union trademarks owned by Embutidos Monells that are almost identical (1) can be considered an effort within a reasonable time to remedy the situation, interrupting the statute of limitations.
2. Pronouncements
The Court of Justice ruled that the owner of an earlier trademark is not bound by the time limits established in an extrajudicial demand when alleging bad faith in the registration of a later trademark. If the owner of the earlier trademark has sufficient evidence of bad faith at the time of the demand, they may continue to invoke invalidity due to bad faith even after the time limit has expired.
Therefore, if the grounds for the nullity action are based on the bad faith of the trademark holder when filing the application for registration of said trademark, the latter cannot, to frustrate said action, validly invoke the statute of limitations for tolerance, established in Article 9, paragraph 1, of the Directive 2008/95, as opposed to a previous trademark holder.
However, the Court notes that, since good faith is presumed, it is the party alleging bad faith that must prove its existence in the examination of the merits of said action.
In view of the answer given to the first preliminary question, it is not appropriate to answer the second.
3. Comment
The ruling in this case is highly relevant because, in addition to following the CJEU's previous jurisprudence on bad faith, since the judgment issued in the matter Chocoladefabriken Lindt & Sprüngli (C-529/07) to HEITEC (C-466 / 20), serves to reinforce that limitation periods should not prevent the exercise of rights when there is bad faith in the application for registration of a trademark.
The owner of an earlier trademark may issue an extrajudicial notice indicating time limits for filing an action for invalidity, which may give the recipient a reasonable expectation that, once that time limit has expired, no legal action will be taken. Although this could be interpreted as binding conduct on the party sending the notice, the CJEU has indicated that this expectation cannot prevail over the imprescriptibility of an action for invalidity based on bad faith.
The ruling is noteworthy because it strengthens the system of fair competition in the European Union, thereby protecting owners of renowned trademarks against the misappropriation of identical or similar distinctive signs by competitors acting in bad faith.
Marta RodriguezAssociate Partner, area of Brands
