Cancellation of registration of shape trade mark was lawful

Case no. 282/2009
Judgment delivered on 3 April 2014.

Malaysia Dairy Industries Pte. Ltd.
vs.
The Board of Appeal for Patents and Trademarks
Intervener for the Board of Appeal for Patents and Trademarks: Kabushiki Kaisha Yakult Honsha

Malaysia Dairy Industries Pte. Ltd. (MDI) had a plastic bottle for a milk drink registered as a shape trade mark in 2000. Kabushiki Kaisha Yakult Honsha (Yakult) objected against the registration, claiming that Yakult had and used older identical trade marks outside of Denmark, and that MDI at the time of application knew or should have known Yakult's older trade marks, cf. section 15(3)(3) of the Danish Trade Marks Act. The Board of Appeal for Patents and Trademarks then cancelled the registration. The case concerned the lawfulness of this cancellation.

During the preparation of the case before the Supreme Court, a question was referred for a preliminary ruling by the Court of Justice of the European Union regarding the interpretation of Article 4(4)(g) of the Trade Marks Directive (Directive 2008/95/EC of 22 October 2008). The Court of Justice delivered its judgment on 27 June 2013 in Case C-320/12.

The Supreme Court held that Yakult fulfilled the condition of use in section 15(3)(3) of the Trade Marks Act, just as the Supreme Court after having compared MDI's bottle with Yakult's bottle concluded that the similarity condition in that provision had also been fulfilled. In addition, based on an overall assessment, the Supreme Court held that MDI was acting in bad faith within the meaning of the Court of Justice's established case law, when it filed an application for registration of its plastic bottle for a milk drink as a shape trade mark on 2 June 1995. Consequently, the cancellation of the shape trade mark registration was lawful.

The Danish Maritime and Commercial Court had reached the same conclusion.