Bad Faith Trade Mark Applications Explained
It is essential that brand owners are able to protect trademark rights and brand reputation when conducting business relying upon them whether at home or internationally.
Any application for a trade mark which is similar to one already owned by someone else may well be met by civil proceedings in which a primary argument in opposition is likely to be that it was made in ‘bad faith’.
The requirements for the existence of ‘bad faith’ have been the subject of much detailed attention through the courts.
However, ‘bad faith’ will not be proven simply because an application to register a trade mark is similar to one which already exists. There needs to be present a further act or intention on the part of the applicant which contravenes acceptable commercial behaviour.
Stuart Southall of KANGS comments upon the general position.
The Law
The Trade Marks Act 1994
Section 3 of the Act - Absolute grounds for refusal of registration.
3(6) A trade mark shall not be registered if or to the extent that the application is made in bad faith’
Article 59 of the European Union Trade Mark Regulation 2016
1. An EU trade mark shall be declared invalid on application to the Office 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.’
The Common Law
Whilst the legislation provides the impression that the definition of bad faith is ‘absolute’, common law shows that this is far from being the position.
It is considered that Sky Ltd v Skykick Ltd [2021], has now clarified trade mark law on bad faith stating that when an objection is raised it must be shown, inter alia:
‘where a party is alleging bad faith, they must properly plead their allegation, to ensure the other party understands the case it is being asked to meet’
If the allegation of bad faith is not properly particularised, the party accused of bad faith can apply to have the allegation ‘Struck Out’. Proving that a trade mark application has been made in bad faith can be difficult and it is essential that unacceptable commercial behaviour can be clearly proven.
Proving Bad Faith and the Possible Avenues
As stated above, proving bad faith is extremely difficult and the standard of proof required is extremely high. Subject to sufficiently powerful evidence being available, it is feasible that arguments could be maintained in the following instances:
The Mark will not be used in commerce, where for example, the Applicant has no online presence. However, the lack of intention to use will not itself amount to bad faith (Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth [2010]).
It could be argued that non-use evidences that the Mark has not been registered with the intention of use, in commerce or otherwise, but merely to damage or cause confusion to the detriment of the mark’s owner.
Confusion is an important factor that is considered when a trade mark application is considered. Section 5(2)(b) Trade Marks Act 1994 confirms that a trade mark:
‘which is identical with or similar to an earlier trade mark; and shall not be registered if, or to the extent that the earlier trade mark has a reputation in the United Kingdom… and the use of the later mark without due cause would take an unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier Mark.’
How Can We Assist?
As will be seen, the description ‘bad faith’ is not easily identifiable with neither Statute nor Case Law completely resolving the issues. Plenty of scope exists for argument based on the discrete circumstances of each dispute.
If you become involved in a trade mark dispute, or any other form of intellectual property dispute, it is essential to seek immediate expert legal advice for guidance and consideration upon future steps to protect your position.
The team at KANGS is highly experienced in advising upon all matters involving Intellectual Property Disputes and will be pleased to assist and provide such expertise. They are energetically pro-active when seeking to secure the best possible outcome to whatever situation is presented to each and every client.
If we can be of assistance, please do not hesitate to contact our team through any of the following, who will be delighted to hear from you.
Tel: 0333 370 4333
Email: info@kangssolicitors.co.uk
We provide initial no obligation discussion at our three offices in London, Birmingham, and Manchester. Alternatively, discussions can be held through video conferencing or telephone.
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