Burden of proof
for
Bad faith
Burden of proof
for
Bad faith
from
When is a trademark application in bad faith? When is a trademark application considered a strategic attack on competitors? Who has to prove that the applicant had unfair intentions? The latest ruling by the Federal Court of Justice in the “Testarossa” case provides decisive answers.
The background: A toy entrepreneur against a sports car giant
A well-known Italian sports car manufacturer and a German entrepreneur from the toy and model car industry were involved in a long-running legal dispute. On December 27, 2013, the entrepreneur registered the German word mark “Testa Rossa” for a wide range of goods at. These included electrical household appliances, tools, bicycles, bags and toys .
The sports car manufacturer, which has been using the name “Testarossa” for its vehicles for decades and has older trademark rights , saw this as a bad faith trademark application. The accusation: The application was not made in order to seriously use the trademark for the registered products. Rather, the entrepreneur had intended to profit from the popularity of the name “Testarossa” and to deliberately hinder the sports car manufacturer. The case went through several instances before it was submitted to the Federal Court of Justice for final clarification.
Decision of the Federal Court of Justice: Burden of proof lies with the attacker
The Federal Court of Justice dismissed the sports car manufacturer’s appeal on points of law with Judgment of 11.09.2025 – Ref. I ZB 6/25 back. The Federal Patent Court, which had previously been seized of the case, had ruled that no bad faith application had been made. The sports car manufacturer, which had the burden of proof in this respect, had not provided sufficient evidence that could lead to a bad faith trademark application being assumed with the necessary certainty.
The Federal Court of Justice clarifies that the party applying for the cancellation of a trademark on the grounds of bad faith bears the full burden of proof or establishment of the relevant evidence.
The party challenging the registration of a trademark in invalidity proceedings on the grounds that it was applied for in bad faith bears the burden of proof or the burden of establishing the existence of the conclusive and consistent indications which are a prerequisite for the assumption of the absolute ground for refusal asserted.
The judges based their decision on a logical and practical distribution of the burden of proof. In principle, there is a presumption that a trademark applicant is acting in good faith. It is therefore the task of the challenging company to rebut this presumption.
To this end, the applicant must present conclusive and consistent evidence that proves an unfair intention on the part of the applicant at the time of the application. Such an intention may, for example, be to deliberately hinder competition or to attach itself to the reputation of a well-known trademark without pursuing its own economic interests.
Only if the applicant seriously disproves the good faith of the trademark owner with tangible evidence is the latter obliged to provide plausible explanations for the objectives and economic logic of his application.
The Karlsruhe federal judges also clarify that the mere existence of older laws is not sufficient for the assumption of bad faith.
Practical implications: What does this mean for companies?
The decision has far-reaching consequences for trademark owners and companies who want to defend themselves against potentially abusive trademark applications.
- Higher hurdles for cancellation requests: Companies wishing to attack a trademark for bad faith must very carefully substantiate their allegations with concrete evidence. Mere assumptions about the applicant’s motives or the assumption that a trademark was only applied for to obstruct are no longer sufficient.
- Strategic documentation for applicants: Trademark owners are well advised to document the economic and strategic considerations behind a trademark application internally. This applies in particular when applying for a name that already enjoys a certain reputation. In the event of a dispute, such documentation can be decisive in demonstrating your own good faith and the economic logic of your actions.
- No automatic reversal of the burden of proof: The decision makes it clear that the burden of proof does not simply shift to the trademark owner. The “ball” is clearly in the court of the attacker, who must prove bad faith.
Conclusion
With the “Testarossa” ruling, the Federal Court of Justice strengthens the legal position of the trademark owner against nullity applications due to bad faith trademark applications.
The accusation of bad faith remains a sharp sword in trademark law, but its use requires a solid and demonstrable basis.
Companies wishing to take action against bad faith trademark applications must adapt their attack strategies accordingly and carefully substantiate their allegations.
At the same time, trademark owners can defend themselves against accusations of bad faith with a well thought-out and documented filing strategy that explains their own motives and circumstances.
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