Bad faith is to be assumed in particular where the applicant, without any specific business relationship with potential users, applies for a multitude of marks with little or no distinctive character, only a small proportion of these applications actually leads to registration, and no realistic business model is discernible for any use of these marks going beyond the assertion of injunctive and payment claims (OGH 27 June 2023, 4 Ob 54/23d).
Under § 34 MarkSchG, anyone may seek the cancellation of a mark if the applicant was acting in bad faith at the time of the application. The concept of „bad faith“ is a concept of EU law that must be interpreted uniformly. Whether an application was made in bad faith is, according to the case law of the ECJ, to be assessed „comprehensively“, taking into account all „relevant factors“ in the specific case. Bad faith has hitherto been affirmed primarily in the case of a breach of loyalty obligations or in the case of the obstruction of a third party already using the sign. However, it cannot be inferred from the case law that bad faith is limited to these categories of case.
A bad-faith acquisition of trade mark rights within the meaning of § 34 MarkSchG presupposes the applicant’s intention, by registering as a trade mark a sign already used by a third party, to obtain a weapon in order to disrupt a system built up by a competitor. This intention need not be the applicant’s only motive; it is sufficient that it is an essential motive. A trade mark application is also made in bad faith where it is made without any intention of the applicant’s own use or marketing, but serves principally to pursue third-party undertakings that later use identical or similar signs for injunctive relief and payment. This is to be assumed in particular where the applicant, without any specific business relationship with potential users, applies for a multitude of marks with little or no distinctive character, only a small proportion of these applications actually leads to registration, and no realistic business model is discernible for a use of these marks going beyond the assertion of injunctive and payment claims. Bad faith is to be assumed where, at the time of the application, the trade mark proprietor was aware that competitors were using, for similar or identical goods, signs that are confusingly similar to the sign applied for by him as a trade mark. The only point in time relevant for the assessment is the time of the application. Later conduct of the applicant or trade mark proprietor contrary to public policy can no longer be pursued under this provision.