The possibility of invalidating a trademark on certain grounds is limited to a five-year period of tolerance of the use of that trademark. This does not apply, inter alia, to applications filed in bad faith. Pursuant to Article 61(1) of Regulation 2017/1001 and Article 9(1) of Directive 2015/2436, the limitation also does not apply to the invalidation of a trademark on the basis of an earlier trademark, provided that the later trademark was registered in bad faith.

Unfortunately, registry authorities including the Polish Patent Office sometimes fail to take the above provisions into account and refuse to invalidate trademarks on the grounds of the lapse of time. This preliminary judgement should influence case law and eliminate incorrect decisions in this area.

CJEU judgement dated 10th July 2025, case file C‑322/24

1. Facts of the case

Sánchez Romero Carvajal Jabugo S.A.U. (‘Sanchez Romero’) is the proprietor of the following registered EU trademarks containing the element 5J:

• (filed on 7 December 1999 for goods in class 29) and
• (filed on 26 August 2010 for goods in class 29).

In November 2016, it sent to Embutidos Monells S.A. (‘Monells’), the proprietor of national trademarks with the elements 5 Ms and 5Ps registered in Spain:

• (filed on 31 October 2011 for goods in class 29);
• (filed on 26 January 2012 for goods in class 29),

a letter requesting that the registration of the above trademarks are withdrawn and that their use is discontinued.

Sanchez Romero pointed out that Monells was aware of the reputation of the earlier 5J marks, as in August 2012 the Spanish Patent Office refused to register the 5Cs mark applied for by Monells following an opposition filed by Sanchez Romero. In the letter it was emphasised that a motion for invalidity of the trademarks could be brought in respect of 5Ms and 5Ps within five years, i.e. until 2017.

The parties entered into negotiations, but Monells did not withdraw its registrations. In addition, it filed further similar marks 5M, which were not registered due to an oppositions by Sánchez Romero.

In November 2021, Sánchez Romero applied for invalidation of the 5Ms and 5Ps trademarks on the grounds that they had been applied for in bad faith.

Monells argued that since Sánchez Romero had tolerated the use of the disputed trademarks for many years after their registration, it could not demand their invalidation. It also pointed out that the action had been brought after the deadline set in the letter dated November 2016.

2. Question referred for a preliminary judgment

The referring court had doubts as to whether Sanchez Romero could file a motion for invalidation nine years after registration of the disputed trademarks, in particular that it indicated in the letter a five-year limitation period for bringing such motion. This could, for example, have led Monells to believe that no action would be brought after the expiry of that period (i.e. after 2017). The national court also had doubts as to whether Sanchez Romero could effectively rely on bad faith only in 2021, since at the time of sending the letter of November 2016, it already had all the information necessary to conclude that the trade mark could have been registered in bad faith.

3. The CJEU’s ruling

First of all, the CJEU recalled that bad faith on the part of the trademark proprietor infringes the principles of fair competition. This is reflected in the applicant’s intention, which, contrary to honest practices, infringes the interests of third parties or seeks to obtain, even without reference to a specific third party, an exclusive right for purposes other than those associated with the functions of a trademark. In the case of a registration made in bad faith, the proprietor cannot therefore rely on the defence of tolerance of use, even if the application for a declaration of invalidity is filed many years after the registration.

The CJEU also pointed out that Sánchez Romero was not bound by its own actions in indicating a five-year time limit for filing a motion for invalidation of the trademarks. Therefore, it could, after the expiry of that period, request the invalidity of the disputed marks, including raising the objection of bad faith, which was not indicated in the 2016 letter.

4. Summary

The CJEU confirmed that the lapse of time does not affect the possibility of invalidating a trademark registered in bad faith, even in such a specific situation where the applicant itself erroneously indicated such a limitation. Neither the significant lapse of time nor the tolerance of infringement can validate a dishonest trademark application. It was also irrelevant that the applicant for invalidity had for many years possessed all the information that could indicate bad faith and that it had not raised this objection in prior negotiations. The CJEU’s judgment is fully in line with EU law, which is clear and precise and should not give rise to any difficulties of interpretation.

https://curia.europa.eu/juris/document/document.jsf;jsessionid=4358C7DE91C899B73B26B0811632BCFB?text=&docid=302381&pageIndex=0&doclang=EN&mode=req&dir=&occ=first&part=1&cid=2081731