Sánchez Romero Carvajal Jabugo, SAU v Embutidos Monells, SA (C-322/24)

Contents

Judgment of the Court (Eighth Chamber)10 July 2025^note(Reference for a preliminary ruling — EU trade mark — Directive 2008/95/EC — Article 9(1) — Action for invalidity — Bad faith on the part of the proprietor of the later trade mark when filing the application for registration of that mark — Absolute ground for invalidity — Limitation in consequence of acquiescence — Not enforceable against the proprietor of the earlier mark)In Case C‑322/24,REQUEST for a preliminary ruling under Article 267 TFEU from the Juzgado de lo Mercantil n^o 1 de Alicante (Commercial Court No 1, Alicante, Spain), made by decision of 27 November 2023, received at the Court on 30 April 2024, in the proceedingsSánchez Romero Carvajal Jabugo S.A.U.vEmbutidos Monells S.A.,THE COURT (Eighth Chamber),composed of S. Rodin, President of the Chamber, O. Spineanu-Matei (Rapporteur) and N. Fenger, Judges,Advocate General: D. Spielmann,Registrar: A. Calot Escobar,having regard to the written procedure,after considering the observations submitted on behalf of:– Sánchez Romero Carvajal Jabugo, S.A.U., by J.M. Iglesias Monravá, abogado,– Embutidos Monells, S.A., by L. Polo Flores, abogado,– the Spanish Government, by S. Núñez Silva, acting as Agent,– the European Commission, by P. Němečková and J. Samnadda, acting as Agents,having decided, after hearing the Advocate General, to proceed to judgment without an Opinion,gives the following

Judgment

1This request for a preliminary ruling concerns the interpretation of Article 61 of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1) and Article 9 of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (OJ 2015 L 336, p. 1).

2The request has been made in proceedings between Sánchez Romero Carvajal Jabugo S.A.U. (‘Sánchez Romero Carvajal’) and Embutidos Monells S.A. (‘Monells’) concerning the application for a declaration of invalidity of two registered national trade marks of which Monells is the proprietor.

Legal context

European Union law

Regulation 2017/1001

3Article 59 of Regulation 2017/1001, entitled ‘Absolute grounds for invalidity’, provides, in paragraph 1 thereof:‘An EU trade mark shall be declared invalid on application to the [European Union Intellectual Property] Office [(EUIPO)] or on the basis of a counterclaim in infringement proceedings:…(b) where the applicant was acting in bad faith when he filed the application for the trade mark.’

4Article 61 of that regulation, entitled ‘Limitation in consequence of acquiescence’, provides:1. Where the proprietor of an EU trade mark has acquiesced, for a period of five successive years, in the use of a later EU trade mark in the [European] Union while being aware of such use, he shall no longer be entitled on the basis of the earlier trade mark to apply for a declaration that the later trade mark is invalid in respect of the goods or services for which the later trade mark has been used, unless registration of the later EU trade mark was applied for in bad faith.2. Where the proprietor of an earlier national trade mark as referred to in Article 8(2) or of another earlier sign referred to in Article 8(4) has acquiesced, for a period of five successive years, in the use of a later EU trade mark in the Member State in which the earlier trade mark or the other earlier sign is protected while being aware of such use, he shall no longer be entitled on the basis of the earlier trade mark or of the other earlier sign to apply for a declaration that the later trade mark is invalid in respect of the goods or services for which the later trade mark has been used, unless registration of the later EU trade mark was applied for in bad faith.3. In the cases referred to in paragraphs 1 and 2, the proprietor of a later EU trade mark shall not be entitled to oppose the use of the earlier right, even though that right may no longer be invoked against the later EU trade mark.’

Directive 2008/95

5Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25) was repealed and replaced by Directive 2015/2436.

6Recital 12 of Directive 2008/95 stated:‘It is important, for reasons of legal certainty and without inequitably prejudicing the interests of a proprietor of an earlier trade mark, to provide that the latter may no longer request a declaration of invalidity nor may he oppose the use of a trade mark subsequent to his own of which he has knowingly tolerated the use for a substantial length of time, unless the application for the subsequent trade mark was made in bad faith.’

7Article 3 of that directive, entitled ‘Grounds for refusal or invalidity’, provided, in paragraph 2 thereof:‘Any Member State may provide that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where and to the extent that:…(d) the application for registration of the trade mark was made in bad faith by the applicant.’

8Article 9 of that directive, entitled ‘Limitation in consequence of acquiescence’, provided, in paragraph 1 thereof:‘Where, in a Member State, the proprietor of an earlier trade mark as referred to in Article 4(2) has acquiesced, for a period of five successive years, in the use of a later trade mark registered in that Member State while being aware of such use, he shall no longer be entitled on the basis of the earlier trade mark either to apply for a declaration that the later trade mark is invalid or to oppose the use of the later trade mark in respect of the goods or services for which the later trade mark has been used, unless registration of the later trade mark was applied for in bad faith.’

Directive 2015/2436

9Article 9 of Directive 2015/2436, entitled ‘Preclusion of a declaration of invalidity due to acquiescence’, provides, in paragraph 1 thereof:‘Where, in a Member State, the proprietor of an earlier trade mark as referred to in Article 5(2) or Article 5(3)(a) has acquiesced, for a period of five successive years, in the use of a later trade mark registered in that Member State while being aware of such use, that proprietor shall no longer be entitled on the basis of the earlier trade mark to apply for a declaration that the later trade mark is invalid in respect of the goods or services for which the later trade mark has been used, unless registration of the later trade mark was applied for in bad faith.’

10Under Article 55 of that directive:‘Directive 2008/95/EC is repealed with effect from 15 January 2019 …’

Spanish law

11Article 51 of Ley 17/2001 de Marcas (Law 17/2001 on trade marks) of 7 December 2001 (BOE No 294 of 8 December 2001, p. 45579; ‘Law 17/2001’), entitled ‘Absolute grounds for invalidity’, provides:1.The trade mark registration may be declared invalid on application to the Oficina Española de Patentes y Marcas [(Spanish Patent and Trade Mark Office)] or on the basis of a counterclaim in infringement proceedings:(a) where it infringes the provisions of Article 5 of the present law;(b) where the applicant was acting in bad faith when filing the application for the trade mark.2. An absolute invalidity action in respect of a registered trade mark is not subject to any limitation period.’

12Under Article 52 of Law 17/2001, entitled ‘Relative grounds for invalidity’:1. The registration of a trade mark may be declared invalid on application to the [Spanish Patent and Trade Mark Office] or on the basis of a counterclaim in infringement proceedings where it infringes Articles 6, 7, 8, 9 and 10.2. The proprietor of an earlier right, among those referred to in Articles 6, 7 and 8 and Article 9(1), who has acquiesced in the use of a later trade mark registered for a period of five successive years while being aware of such use shall no longer be entitled to apply for a declaration that the later trade mark is invalid on the basis of that earlier right in respect of the goods or services for which the later trade mark has been used, unless the later trade mark was applied for in bad faith. In the case referred to in the present paragraph, the proprietor of the later trade mark shall not be entitled to oppose the use of the earlier right, even though that right may no longer be relied on against the later trade mark.’

The dispute in the main proceedings and the questions referred for a preliminary ruling

13Sánchez Romero Carvajal is the proprietor of EU trade mark 5J Cinco Jotas SÁNCHEZ ROMERO CARVAJAL JABUGO, S.A. DESDE 1879, applied for on 7 December 1999 and registered on 4 October 2006, in respect of goods in Class 29 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended.

14Sánchez Romero Carvajal is also the proprietor of the EU mark 5J, applied for on 26 August 2010 and registered on 5 July 2015, in respect of goods in the same class.

15Monells is the proprietor of the Spanish national marks 5Ms and 5Ps applied for on 31 October 2011 and 26 January 2012 and then registered on 9 February and 3 May 2012 respectively, in both cases in respect of goods in Class 29 (‘the marks at issue’).

16By extrajudicial letter of formal notice sent to Monells on 3 November 2016, Sánchez Romero Carvajal inter alia instructed Monells to withdraw the registrations of the marks at issue and to cease using the figurative mark 5Ms. In that letter of formal notice, it was stated, first, that Monells was aware of the reputation of the mark 5J belonging to Sánchez Romero Carvajal because, as a result of Sánchez Romero Carvajal’s opposition, Monells’ registration of the sign 5Cs had been refused on 12 July 2012 by the Spanish Patent and Trade Mark Office. It was stated therein, second, that the marks at issue had characteristics similar to the sign 5Cs and, third, that an invalidity action could be brought in respect of the marks 5Ms and 5Ps before 28 February and 18 March 2017 respectively.

17On 2 November 2021, Sánchez Romero Carvajal, on the basis of Article 59 of Regulation 2017/1001 and Article 51(1)(b) of Law 17/2001, brought infringement proceedings against Monells before the Juzgado de lo Mercantil n^o 1 de Alicante (Commercial Court No 1, Alicante, Spain), which is the referring court, seeking a declaration that the marks at issue are invalid on the ground that Monells had acted in bad faith when it filed the application for registration of those marks.

18Relying on Article 61 of Regulation 2017/1001 and Article 52(2) of Law 17/2001, Monells relied on the limitation in consequence of acquiescence, claiming that the marks at issue were registered in 2012, that Sánchez Romero Carvajal had acquiesced in the use of those marks for a long time and that the time limits for bringing an invalidity action stated by Sánchez Romero Carvajal in the extrajudicial letter of formal notice had expired.

19In that context, that court is uncertain as to the effects which the indication, in that letter of formal notice, of specific time limits for bringing invalidity actions in respect of the marks at issue may have. It asks, first, whether such an indication should be regarded as conduct falling within the scope of ‘own acts’ capable of giving rise to an expectation on Monells’ part that, after the expiry of those time limits, the proprietor of the earlier marks would no longer bring legal proceedings in respect of the marks at issue. Second, that court asks whether Sánchez Romero Carvajal could still base its action on the absolute ground for invalidity and allege bad faith on the part of Monells at the time when the application for registration of the marks at issue was filed, in order to avoid the application of the period of limitation laid down in Article 9(1) of Directive 2008/95, even though, at the time of that letter of formal notice, Sánchez Romero Carvajal could not have been unaware of the existence of that bad faith on the part of the proprietor of the marks at issue.

20According to the referring court, it is established that Monells acted in bad faith when it filed the applications for registration of the marks at issue, given that Sánchez Romero Carvajal’s marks had a reputation in the Kingdom of Spain at that time. The criteria set out in the judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli (C‑529/07, EU:C:2009:361), were thus established.

21Should it be held that Sánchez Romero Carvajal is bound by its own acts and can no longer rely on bad faith as a ground for invalidity, that court states that it will have to decide whether there is the limitation in consequence of acquiescence, in accordance with the principles established by the judgments of 22 September 2011, Budějovický Budvar (C‑482/09, EU:C:2011:605), and of 19 May 2022, HEITEC (C‑466/20, EU:C:2022:400).

22In that regard, that court states that on 9 February 2017, that is to say, following Sánchez Romero Carvajal’s letter of formal notice referred to in paragraph 16 of the present judgment, and following the negotiations initiated between those two parties, which ended without agreement on 28 December 2016, Monells applied to EUIPO for registration of two EU marks, namely and . Upon opposition by Sánchez Romero Carvajal, registration was refused on 2 June 2018 and 2 December 2020 respectively.

23Since the application for a declaration of invalidity in the main proceedings was brought on 2 November 2021, that is to say 11 months after the latter refusal of registration, the referring court raises the question as to whether that opposition concerning two marks which are practically identical to the marks at issue can be classified as an act interrupting the period of limitation.

24According to that court, the sending of an extrajudicial letter of formal notice by the proprietor of an earlier mark indicating a time limit for bringing an invalidity action should be binding on that proprietor, given that that conduct gave rise to the expectation on the part of the undertaking to which that letter of formal notice was addressed that that action would not be brought once that time limit had expired. Therefore, reliance on, in the course of legal proceedings initiated after the expiry of that time limit, the bad faith on the part of that undertaking when filing the application for registration of a later mark in order to avoid the application of the five-year time limit for bringing an invalidity action should be regarded as conduct contrary to good faith.

25That court states that although it follows from the judgment of 19 May 2022, HEITEC (C‑466/20, EU:C:2022:400), that the bringing of an administrative or court action by the proprietor of a mark or other earlier right, faced with the refusal of the addressee of a letter of formal notice to cease use of a later mark, constitutes proof that that proprietor has made an effort to remedy that situation, that case-law should not be interpreted as meaning that only those types of steps could provide such proof. According to that court, it is the overall conduct of the proprietor of the earlier registration which should be analysed for that purpose. Therefore, the bringing of an opposition by that proprietor to the registration of EU marks similar to the marks at issue falls within the scope of the concept of ‘effort within a reasonable period’ within the meaning of that case-law.

26In those circumstances, the Juzgado de lo Mercantil n^o 1 de Alicante (Commercial Court No 1, Alicante) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:(1) Should Article 61 of Regulation [2017/1001] and Article 9 of Directive [2015/2436] be interpreted as meaning that the proprietor of an earlier registration who sets a specific time limit in the warning letter for bringing an action for a declaration of invalidity that clearly and unambiguously coincides with the general time limit of five years for bringing an action for a declaration of invalidity, is subject to the principle of estoppel, since that party has given the proprietor of the later trade mark the expectation that that proprietor will not be sued on the basis of possible invalidity after the specified date? In that regard, should a plea of bad faith in the application for registration asserted in subsequent legal proceedings for the purpose of avoiding the existence of a limitation period be regarded as conduct contrary to the principle of good faith if, at the time when the burofax [mail sent by means of a service enabling certification of the dates of sending and receipt, the identity of the sender and the recipient, and even the content] was sent, the party already had all the elements necessary to consider that the registration had been applied for in bad faith?(2) If the answer to the first question is in the affirmative, should Article 61 of Regulation [2017/1001] and Article 9 of Directive [2015/2436] be interpreted as meaning that the conduct of the applicant in actively opposing the registration of EU trade marks that substantially overlap with the contested national trade marks, where registration was ultimately refused as a result of that opposition, constitutes an effort within a reasonable period to remedy that situation?’

Consideration of the questions referred

Preliminary observations

27According to settled case-law, in the procedure laid down in Article 267 TFEU, which provides for cooperation between national courts and the Court of Justice, it is for the latter to provide the national court with an answer which will be of use to it and enable it to decide the case before it. With that in mind, the Court may have to reformulate the questions referred to it. The fact that a national court has, formally speaking, worded a question referred for a preliminary ruling with reference to certain provisions of EU law does not prevent the Court from providing the national court with all the points of interpretation which may be of assistance in adjudicating on the case pending before it, whether or not that court has referred to them in its questions. In that regard, it is for the Court to extract from all the information provided by the national court, in particular from the grounds of the decision referring the questions, the points of EU law which require interpretation, having regard to the subject matter of the dispute (see, inter alia, judgment of 27 March 2025, Amozov, C‑67/24, EU:C:2025:214, paragraph 28 and the case-law cited).

28As is apparent from the request for a preliminary ruling, the referring court is uncertain as to the interpretation of Article 61 of Regulation 2017/1001 and Article 9 of Directive 2015/2436.

29It must be observed that Article 61 of Regulation 2017/1001 concerns the limitation of an invalidity action in consequence of acquiescence of the proprietor of an EU trade mark in respect of the use, for a period of five successive years, of a later EU trade mark, whereas, in the present case, the later marks in respect of which a declaration of invalidity is sought are the subject of a national registration. It is thus apparent that that provision does not apply to the dispute in the main proceedings, which falls within the scope, ratione materiae, of Directive 2015/2436 or Directive 2008/95.

30It should be borne in mind, in that regard, that Directive 2015/2436, the interpretation of which is the subject of the questions referred by the referring court, repealed Directive 2008/95 with effect from 15 January 2019.

31In order to determine which of those two directives is applicable ratione temporis, the date of the application for registration of the mark in respect of which a declaration of invalidity is sought is decisive (see, to that effect, judgment of 29 January 2020, Sky and Others, C‑371/18, EU:C:2020:45, paragraph 49 and the case-law cited).

32Since the applications for registration of the marks at issue were filed on 31 October 2011 and 26 January 2012, it follows that the invalidity action in respect of those marks falls within both the material and the temporal scope of Directive 2008/95.

33Consequently, the questions referred by the referring court must be understood as seeking the interpretation of Article 9(1) of Directive 2008/95.

The first question

34By its first question, the referring court asks, in essence, whether Article 9(1) of Directive 2008/95 must be interpreted as meaning that the proprietor of an earlier mark who has indicated in an extrajudicial letter of formal notice, addressed to the proprietor of a later trade mark and seeking the cessation of its use, a time limit for bringing an invalidity action in respect of that mark, which coincides with the expiry of the period of limitation of five successive years laid down in Article 9(1) of that directive, may apply, after the date indicated, for a declaration of invalidity on the basis of bad faith on the part of the proprietor of the later mark when filing the application for registration of that mark, even though, at the time of that letter of formal notice, that proprietor of the earlier mark had all the information necessary to consider that the registration had been applied for in bad faith.

35According to settled case-law, in interpreting a provision of EU law, it is necessary to consider not only its wording but also the context in which it occurs and the objectives pursued by the rules of which it is part (judgments of 17 November 1983, Merck, 292/82, EU:C:1983:335, paragraph 12, and of 8 May 2025, Pielatak, C‑410/23, EU:C:2025:325, paragraph 54 and the case-law cited).

36First of all, in accordance with Article 9(1) of Directive 2008/95, where, in a Member State, the proprietor of an earlier trade mark has acquiesced, for a period of five successive years, in the use of a later trade mark registered in that Member State while being aware of such use, he or she shall no longer be entitled on the basis of the earlier trade mark either to apply for a declaration that the later trade mark is invalid or to oppose the use of the later trade mark in respect of the goods or services for which the later trade mark has been used, unless registration of the later trade mark was applied for in bad faith.

37It follows from the very wording of Article 9(1) of Directive 2008/95 that the period of limitation laid down therein does not apply in two situations, namely, where acquiescence has not been established on the part of the proprietor of the earlier trade mark or, in any event, it has not been established for a period of five successive years and where the proprietor of the later trade mark acted in bad faith when filing the application for registration of that trade mark.

38As is apparent from the case-law of the Court, one of the conditions which must be satisfied in order for the period of limitation in consequence of acquiescence laid down in Article 9(1) of Directive 2008/95 to start running is that the application for registration of the later trade mark must have been made by its proprietor in good faith (see, to that effect, judgment of 22 September 2011, Budějovický Budvar, C‑482/09, EU:C:2011:605, paragraph 56).

39Consequently, if the ground on which the invalidity action is based consists in bad faith on the part of the proprietor of the later mark when filing the application for registration of that mark, the latter cannot validly rely on the limitation in consequence of acquiescence, provided for in Article 9(1) of Directive 2008/95, against a proprietor of the earlier mark in order to prevent that action.

40The interpretation which follows from the wording of Article 9(1) of Directive 2008/95 is further supported by the context of that provision.

41It should be noted that, as is apparent from Article 3(2)(d) of Directive 2008/95, bad faith on the part of the applicant when filing the application for registration of a trade mark constitutes, inter alia, a ground for invalidity of a registered trade mark. As is apparent from the case-law of the Court, that is an absolute ground for invalidity (see, to that effect, judgment of 29 January 2020, Sky and Others, C‑371/18, EU:C:2020:45, paragraph 75).

42The absolute nature of the invalidity attached to that ground, the invocation of which is, in principle, not subject to a limitation period, does not contradict the interpretation which follows from the wording of Article 9(1) of Directive 2008/95, according to which limitation in consequence of acquiescence cannot validly be relied on in the case of use for a period of five successive years of a later mark, the registration of which follows the filing of an application in bad faith.

43It should also be noted that Article 3(2)(d) of Directive 2008/95 gave the Member States the option of providing, as a ground for refusing registration of a mark, but also as a ground for invalidity of a mark already registered, that the application for registration of the mark was made in bad faith by the applicant.

44Lastly, the interpretation which follows from the wording of Article 9(1) of Directive 2008/95 and from the context of that provision is consistent with the general objective pursued by the EU trade mark rules and, in particular, by that directive, which is aimed, in particular, at contributing to the system of undistorted competition in the European Union, in which each undertaking must, in order to attract and retain customers by the quality of its goods or services, be able to have registered as trade marks signs which enable the consumer, without any possibility of confusion, to distinguish those goods or services from others which have a different origin (see, to that effect, judgment of 29 January 2020, Sky and Others, C‑371/18, EU:C:2020:45, paragraph 74 and the case-law cited).

45Bad faith on the part of the proprietor of a trade mark when filing the application for registration of that mark is detrimental to the development of healthy competition, since it reflects the intention of that proprietor of undermining, in a manner inconsistent with honest practices, the interests of third parties, or obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark (see, to that effect, judgment of 29 January 2020, Sky and Others, C‑371/18, EU:C:2020:45, paragraph 75 and the case-law cited).

46It follows from the foregoing that, if the ground on which the invalidity action is based consists of bad faith on the part of the proprietor of the later mark when filing the application for registration of that mark, the limitation in consequence of acquiescence provided for in Article 9(1) of Directive 2008/95 cannot be relied on against the proprietor of the earlier mark in order to prevent that action. By contrast, given that good faith is presumed, the party relying on bad faith must establish its existence in the context of the examination of the substance of that action.

47In the present case, as is apparent from the request for a preliminary ruling, the referring court considers that it has been established that there was bad faith on the part of the proprietor of the later marks at the time when the applications for registration of those marks were filed.

48Nevertheless, it asks whether the particular circumstances of the case in the main proceedings may be relevant in the context of the assessment of the invalidity action under Article 9(1) of Directive 2008/95. In that regard, the referring court refers to the fact, first, that the proprietor of the earlier mark indicated, in an extrajudicial letter of formal notice, two specific dates, corresponding to the expiry of the five-year time limit laid down in that provision, for the purposes of bringing an invalidity action in respect of the marks at issue, which ultimately did not take place within that time limit, and, second, that that proprietor was aware of the bad faith on the part of the proprietor of the marks at issue at the time when that letter of formal notice was sent.

49It should be noted that, as is apparent from paragraph 39 of the present judgment, those circumstances cannot validly be relied on by the proprietor of the marks at issue in order to rely on the limitation in consequence of acquiescence within the meaning of Article 9(1) of Directive 2008/95 and, thus, prevent an invalidity action based on the bad faith of that proprietor when filing the applications for registration of those marks. Those circumstances cannot lead to the loss of the right of the proprietor of the earlier mark to bring such an action for which that directive does not lay down a time limit.

50In the light of the foregoing, the answer to the first question is that Article 9(1) of Directive 2008/95 must be interpreted as meaning that the proprietor of an earlier mark who has indicated in an extrajudicial letter of formal notice, addressed to the proprietor of a later trade mark and seeking the cessation of its use, a time limit for bringing an invalidity action in respect of that mark, which coincides with the expiry of the period of limitation of five successive years laid down in Article 9(1) of that directive, may apply, after the date indicated, for a declaration of invalidity on the basis of bad faith on the part of the proprietor of the later mark when filing the application for registration of that mark, even if, at the time of that letter of formal notice, that proprietor of the earlier mark had all the information necessary to consider that the registration had been applied for in bad faith.

The second question

51In the light of the answer to the first question, there is no need to answer the second question.

Costs

52Since these proceedings are, for the parties to the main proceedings, a step in the action pending before the referring court, the decision on costs is a matter for that court. Costs incurred in submitting observations to the Court, other than the costs of those parties, are not recoverable.

Operative part

On those grounds, the Court (Eighth Chamber) hereby rules: Article 9(1) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marksmust be interpreted as meaning that the proprietor of an earlier mark who has indicated in an extrajudicial letter of formal notice, addressed to the proprietor of a later trade mark and seeking the cessation of its use, a time limit for bringing an invalidity action in respect of that mark, which coincides with the expiry of the period of limitation of five successive years laid down in Article 9(1) of that directive, may apply, after the date indicated, for a declaration of invalidity on the basis of bad faith on the part of the proprietor of the later mark when filing the application for registration of that mark, even if, at the time of that letter of formal notice, that proprietor of the earlier mark had all the information necessary to consider that the registration had been applied for in bad faith.