23 Oct Analysis: “You Don’t Have to Make a Bad Filing to Have a Bad Faith Filing: CeramTec (C-17/24)”
Coexistence of the absolute grounds for refusal and bad faith
Door Hanne Lammens Senior Trademarks | Designs Attorney IP Hills | Ipsilon Group
On 19 June 2025, the Court of Justice issued its judgment in CeramTec v. Coorstek (C-17/24), a case related to the coexistence of the absolute grounds for refusal and bad faith of the applicant in the context of EU trade mark law. In its judgment, the Court sided with the Opinion of Advocate General Biondi and held that a finding of bad faith does not depend on the sign in question also consisting exclusively of the shape of goods necessary to achieve a technical result.
Facts and Heart of the Dispute
In this case, the German manufacturer CeramTec, producing hip and knee implants, registered three EU trade marks (a colour, a figurative, and a three-dimensional trademark) after its patent had expired.
In December 2013, CeramTec initiated infringement proceedings against the American company Coorstek. In response, Coorstek filed for invalidity of the trademarks under Article 52(1)(b) of EU Trademark Regulation No 207/2009, alleging that CeramTec had acted in bad faith when applying for the marks.
When CeramTec filed the contested trademarks, it believed that chromium oxide played a technical role by contributing to the durability of the ceramic balls used in medical implants. They sought to protect the pink colour, resulting from chromium oxide, as a trademark. However, it was later shown this colour had no technical function. Therefore, the trademarks were not in conflict with Article 7(1)(e)(ii) of EU Trademark Regulation No 207/2009, which sets out the following absolute ground for refusal: ‘signs that consist exclusively of the shape of goods which is necessary to obtain a technical result’.
It was however argued that, at the time of filing, CeramTec intended to obtain exclusive rights over a technical function, and that this established a trademark applied for in bad faith. CeramTec argued that interpreting Article 52(1)(b) of EU Trademark Regulation No 207/2009 in a way that allows cancellation of a trade mark solely because the applicant intended to extend protection over a technical solution, without proving that the trademark would actually secure such protection, would undermine Article 7(1)(e)(ii) and distort the distinct purposes of these two provisions.
Assistance from the Court of Justice Required
In light of these circumstances, the Cour de cassation (Court of Cassation) decided to suspend the proceedings and submit the following (rephrased) questions to the Court of Justice for a preliminary ruling:
- Must Article 52(1) of Regulation No 207/2009 be interpreted as meaning that the absolute ground for invalidity laid down in Article 52(1)(a) of that regulation, read in conjunction with Article 7(1)(e)(ii) of that regulation, and the absolute ground for invalidity laid down in Article 52(1)(b) of that regulation are autonomous and mutually exclusive?
- Must Article 52(1)(b) of Regulation No 207/2009 be interpreted as meaning that bad faith on the part of the applicant for registration of a sign as a trade mark may, if that registration was sought following the expiry of a patent, be substantiated solely on the basis of the opinion of that applicant as to the suitability of that sign for expressing the technical solution previously protected by that patent, irrespective of whether that sign consists exclusively of the shape of goods which is necessary to obtain a technical result, within the meaning of Article 7(1)(e)(ii) of that regulation?
- Must Article 52(1)(b) of Regulation No 207/2009 must be interpreted as meaning that the applicant’s bad faith may be assessed on the basis of circumstances arising after the filing of the application for registration of the mark at issue?
The Grounds for Invalidity are Autonomous and Not Mutually Exclusive
The first question is answered by the Court of Justice in two parts. The first part examines whether the two grounds for invalidity are autonomous.
To support their independence, the Court pointed to the structure of Article 52(1) of Regulation 207/2009, where subparagraphs (a) and (b) are separated by a semicolon, indicating distinct legal bases.
The Court also referred to the Société des Produits Nestlé case (C-215/14, para. 46), which confirmed that the grounds for refusal in Article 7 operate independently. By analogy, the Court concluded that the grounds for invalidity in Article 52(1) must also be applied separately.
The Court highlighted that Article 52(1) is applied in a defined number of cases, whereas bad faith may be applied in indetermined number of cases. This flexibility serves the public interest, as it ensures that trade mark protection cannot be misused. Given that a trade mark grants powerful, potentially perpetual exclusive rights, it is essential to prevent applicants from securing such rights for purposes unrelated to the use as an indicator of commercial origin. Seeking to prevent third parties from using a previously patented invention, once the patent has expired, clearly reflects a purpose that goes beyond the legitimate function of a trade mark.
Further the Court compares the purposes of the different grounds for invalidity. Article 52(1)(a) targets trade marks that inherently fail to meet the requirements of registration—such as those that monopolize technical solutions—because they are incapable of functioning as trade marks.
In contrast, Article 52(1)(b) focuses on the conduct of the applicant. It aims to prevent abuse of the trade mark system by penalising dishonest intentions, regardless of whether the mark itself is registrable.
The Court concludes that bad faith (Article 52(1)(b)) and absolute grounds (Article 52(1)(a), referring to Article 7) are independent grounds for invalidity.
This case underscores the importance of undefining bad faith. Even if chromium oxide did produce a technical effect, Article 7(1)(e)(ii) might not have applied, as it addresses shapes necessary to achieve a technical result. In this instance, the pink colour was merely a by-product of the chromium oxide and not essential to achieving any technical outcome. Furthermore, colour does not constitute a shape. This last gap was addressed by Regulation (EU) 2015/2424, which expanded the provision to include ‘or another characteristic’, thereby encompassing features like colour. The open-ended nature of the bad faith ground remains crucial in such cases, as it allows potentially abusive registrations to still be challenged.
Regarding the second part of the first question, the Court held that the two absolute grounds for invalidity under Article 52(1)(a) and (b) of Regulation 207/2009 are not mutually exclusive. A trade mark can be invalidated on either or both grounds, depending on the case, and there is no legal requirement to apply only one.
Assessing Bad Faith in Trademark Applications After Patent Expiry
The Court clarified that under Article 52(1)(b) of Regulation 207/2009, a finding of bad faith in trademark registration can be based on the applicant’s intention to extend monopoly rights after a patent has expired. This includes the applicant’s view that the sign expresses a previously patented technical solution, even if the sign does not fall under the shape exclusion in Article 7(1)(e)(ii). To prove bad faith, authorities must assess a range of factors such as the sign’s origin, its use, the expired patent’s scope, commercial motives, and the timeline of events.
It is essential to distinguish between the purposes served by patents and trade marks. While both forms of intellectual property may complement one another, they are designed to operate in separate domains. Accordingly, a trade mark that effectively masks or replicates the features of a patent is likely to be invalid—either because it protects purely functional elements, or because it was registered with the intention of distorting fair competition.
The Court also notes that factors relevant to relative grounds for refusal may contribute to a finding of bad faith under Article 52(1)(b) of Regulation No 207/2009, even if those grounds
are not fully satisfied. The boundaries of this line of reasoning remain uncertain — for instance, could knowingly applying for a descriptive trade mark be seen as evidence of bad faith?
Timing of Bad Faith Assessment in Trade Mark Applications
The Court clarified that under Article 52(1)(b) of Regulation 207/2009, bad faith must be assessed based on the applicant’s intentions at the time of filing the trade mark application. Although later circumstances can serve as evidence revealing what the applicant’s intentions were at that moment, they cannot change or create a perception that did not exist at the time of filing. In other words, only facts and knowledge available to the applicant when applying are relevant; subsequent developments that were unknown at the time cannot retrospectively establish bad faith.
Author’s opinion
The CJEU’s judgment in CeramTec v. Coorstek reinforces the essential role of the bad faith doctrine in safeguarding the integrity of the EU trade mark system. By confirming that bad faith and the absolute grounds for refusal under Article 7 are autonomous and may coexist, the Court sends a clear signal: trade mark rights cannot be used as a backdoor to extend expired patent monopolies.
Importantly, the ruling establishes that bad faith may be found even when a trade mark does not fall under the shape exclusion of Article 7(1)(e)(ii), as long as the applicant’s intention was to circumvent the limitations of patent protection. The Court’s emphasis on assessing bad faith based on the applicant’s mindset at the time of filing, while allowing later facts to shed light on those intentions, offers a balanced and fair approach.
This decision rightly upholds the public interest by affirming that trade marks are not tools for monopolising technical solutions after patent expiry. The judgment also highlights why the open-ended nature of Article 52(1)(b) remains crucial: it acts as a necessary safety net in cases where applicants exploit legal grey areas to gain unfair advantages.
Sources:
Case C‑17/24, CeramTec GmbH v. Coorstek Bioceramics LLC, ECLI:EU:C:2025:455.
COUNCIL REGULATION (EC) No 207/2009 of 26 February 2009 on the Community trade mark.
REGULATION (EU) 2015/2424 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL of 16 December 2015 amending Council Regulation (EC) No 207/2009 on the Community trade mark and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs)