When can a trademark owner take action against a trademark application even after 5 years?

In principle, a trademark owner who has tolerated the use of a conflicting, junior trademark for many years loses the right to invoke the invalidity of that trademark after five years. This principle, known as "estoppel due to forbearance," is a cornerstone of legal certainty in the trademark law. But what if the younger mark was applied for in bad faith? Does that five-year sunset period still apply then?

In a judgment of July 10, 2025 (Case C-322/24), the European Court of Justice gave a clear answer: no. A claim for annulment based on bad faith may be always be instituted regardless of the period of tolerance.

This is excellent news for entrepreneurs and trademark owners in Belgium. Our office , specialized in trademark law, explains this ruling for you.

The facts: a Spanish ham issue

The case was between two Spanish producers of meat products. On one side was Sánchez Romero Carvajal, the holder of the well-known and older Union trademarks "5J" and "Cinco Jotas." On the other side was Embutidos Monells, which in 2011 and 2012 registered the national Spanish trademarks "5Ms" and "5Ps" for the same goods.

Sánchez Romero Carvajal believed that Monells deliberately tried to hitch a ride on the fame of its "5J" mark and thus acted in bad faith in the trademark application. Back in 2016, Sánchez Romero Carvajal's lawyer sent a notice of default to Monells, urging them to cease use. Remarkably, this letter stated the deadlines within which a nullity action could be brought, namely the five-year period.

However, Sánchez Romero Carvajal allowed these deadlines to expire and did not go to court until 2021 to claim the invalidity of Monells' trademarks on grounds of bad faith. Monells defended itself by arguing that the right to act had been exhausted, since Sánchez Romero Carvajal had knowingly tolerated the use of the marks for more than five years.

The legal question: estoppel versus bad faith

The Spanish court wrestled with this situation and referred the question to the Court of Justice of the European Union. The key question was: is a trademark owner bound by its own actions (such as stating a sunset period in a letter) and cannot subsequently rely on the bad faith of the other party to circumvent that sunset period?

According to article 9 of Directive 2008/95/EC (now 2015/2436), an owner of an older mark who has knowingly condoned the use of a younger mark for five consecutive years can no longer claim its invalidity, unless the later mark was filed in bad faith.

So the question was how absolute this bad faith exception is.

The Court's opinion

The Court of Justice rules very clearly and in favor of the proprietor of the earlier mark.

The Court stated that bad faith in filing a trademark application is a absolute nullity is. This means that the protection of the public interest, in particular fair and undistorted competition, outweighs here the legal certainty for the individual trademark owner who acted in bad faith.

The rule of estoppel for forbearance is intended to create a balance, but it does not protect those who had dishonest intentions from the start.

Accordingly, the Court concluded that the proprietor of an earlier mark could bring a claim of invalidity based on bad faith, even if:

1. He knowingly condoned the use of the younger mark for more than five years.
2. He himself cited the five-year expiration period in an earlier notice of default.
3. He already knew at the time of that notice of default that there was bad faith.

In short, the penalty for a bad faith filing is so fundamental that it cannot be "erased" by the mere expiration of a deadline.

What does this mean for you as a trademark owner in Belgium?

This ruling is significant for Belgian trademark owners.

• Stronger protection against brand hijackers: You are significantly stronger against competitors or "brand hijackers" who try to lean on your success by registering a similar trademark.
• The door is still ajar: Have you established trademark infringement in the past, but (for whatever reason) let the five-year deadline pass? This ruling confirms that you may still be able to take action, provided you can prove the other party's bad faith.
• Burden of proof is crucial: It is important to remember that good faith is presumed. If you claim bad faith, the burden of proof is on you. You will have to show that the other party intended to unfairly harm your interests or obtain a right for purposes other than that of a trademark.

For Benelux trademarks, Article 9 of the aforementioned European Directive was transposed into Article 2.30septies BTIP.

Conclusion

The Court of Justice has drawn a clear line: those acting in bad faith cannot hide behind a sunset period. This strengthens the position of bona fide trademark owners and contributes to a healthier and fairer competitive environment.

Are you dealing with a trademark that is too close to yours? Do you suspect that a competitor has acted in bad faith in a trademark registration? Even if some time has passed, your case may not yet be lost.