Bösgläubigkeit (Bad Faith) In Trademark Filings: A Growing Risk For Businesses

In German trademark law, the ‘first-to-file’ principle appears, at first glance, to grant exclusive rights to the mark owner simply through registration. However, this principle is subject to a fundamental limitation. Giovanna Cassin describes the concept of bad faith in trademark filings, known in German law as ‘Bösgläubigkeit’. 

Although not a new concept, bad faith has become increasingly central in practice in Germany, both before the German Patent and Trade Mark Office (DPMA) and in the case law of the Federal Court of Justice (BGH), in line with developments at EU level, including decisions by the EU Intellectual Property Office (EUIPO). 

In particular, in a notice dated 11 February 2026, the DPMA expressly highlighted a significant increase in potentially bad-faith trademark applications since mid-2025. The authority referred to filings targeting signs already successfully used by third parties without formal protection, often with the aim of subsequently exerting pressure on them. According to the DPMA, trademark registrations are increasingly being used strategically, not to indicate commercial origin, but to gain leverage in competitive contexts. The DPMA identified technological and market developments as contributing factors, such as AI tools that make it easier to identify unregistered signs, and online marketplace enforcement mechanisms which increasingly allow trademark registrants to block third parties (even authorised ones) swiftly, often before those affected can effectively respond.

Against this background, businesses are advised to secure registered protection at an early stage and to actively monitor new filings for trademark registrations that are (potentially) filed in bad faith. 

What is Bösgläubigkeit in trademark filing? 

Bösgläubigkeit arises where a trademark application is filed without a genuine intention to use, but rather to pursue abusive or unfair objectives, such as obstructing third parties, obtaining undue advantages, or interfering with pre-existing rights. 

Bad faith is expressly regulated under the German Trademark Act (MarkenG). Pursuant to § 8(2) No. 14 MarkenG, a trademark application is excluded from registration where the applicant acted in bad faith. The same concept also applies post‑registration: under § 50(1) MarkenG, a registered trademark may be declared invalid if it was filed in bad faith. This dual mechanism ensures that bad‑faith conduct can be addressed both at the examination stage and retrospectively through invalidity proceedings. 

Neither German nor EU law provides an exhaustive definition of bad faith. Instead, it is assessed through an overall evaluation of all relevant circumstances, with particular emphasis on the applicant’s intention at the time of filing. 

Indicators of bad faith in case law 

Determining bad faith requires a complex assessment of both subjective intent and objective circumstances. German case law, strongly influenced by EU jurisprudence, has identified several key indicators: 

1. Lack of genuine intention to use

(Higher Regional Court of Frankfurt, 3 May 2021, Case No. 6 W 31/21 – ASCOLI; German Federal Court of Justice, 2 April 2009, Case No. I ZB 8/06 – Ivadal I)

2. Knowledge (or constructive knowledge) of prior rights,

particularly in the context of prior commercial relationships (e.g. distributors, agents)

(German Federal Court of Justice, 15 October 2015, Case No.  I ZB 44/14 – LIQUIDROM)

3. Blocking or extortion purposes,

aimed at hindering competitors (trademark squatting) 

(German Federal Court of Justice, 23 September 2015, Case No. I ZR 105/14; German Federal Court of Justice, 10 January 2008, Case No. I ZR 38/05 – AKADEMIKS)

4. Serial and strategic filings

(General Court, 21 April 2021, Case No. T-663/19 – MONOPOLY)

5. Free-riding on the reputation of others

(General Court, 14 May 2019, Case No. T-795/17 – NEYMAR; General Court, 8 May 2014, Case No. T-327/12 – SIMCA)

Taken together, these decisions illustrate that bad faith typically results from a combination of factors, such as lack of intent to use, knowledge of prior use or the strategic use of trademarks as tools of obstruction. It is not necessary for all elements to be present; rather, the overall conduct must reveal a misuse of the trademark system.

The German approach 

In German jurisprudence, bad faith is assessed on a case-by-case basis and generally interpreted restrictively to avoid overextension of the concept. Compared to EU practice, this approach may be seen as stricter, as it requires clear evidence of manifest bad faith. 

In its recent decision of 24 July 2025 (Case No. I ZR 100/23 – Testarossa/Testa Rossa), the Federal Court of Justice emphasised that bad faith is not a universal corrective, but an exception to be applied narrowly. Accordingly, the finding of bad faith requires a demonstrable intention to cause harm, which must constitute the primary motive behind the application; mere knowledge of an earlier sign or conduct within the bounds of normal competition is not sufficient. German courts, therefore, require both objectively abusive behaviour and a subjective intention to interfere with third-party interests. In addition, there is a presumption of good faith, with the result that the burden of proof rests on the party alleging bad faith and must be met by concrete evidence. 

Consequences of bad-faith filings and practical implications 

The consequences of a bad-faith application pursuant to German Law are significant: 

• refusal of the application; 
• invalidation of the registered trademark; 
• potential liability for damages.

In light of these considerations, businesses are advised to pursue a cautious and well‑structured trademark filing strategy. Applications should be grounded in a genuine intention to use, with the specification of goods and services closely aligned with realistic and foreseeable business plans. At the same time, clear arrangements on the ownership of signs are essential, particularly in relationships with distributors, agents, and other commercial partners.

Ongoing monitoring of trademark registers further complements this approach, as it enables the early identification of potentially abusive filings and allows timely strategic or legal responses. When combined with a carefully calibrated filing strategy and clear contractual arrangements on ownership, these preventive measures significantly reduce exposure to allegations of Bösgläubigkeit. At the same time, they enhance legal certainty and contribute to the long‑term stability and sustainable development of trademark portfolios under German law.