Bad faith trade mark filings. Do not pass Go. Do not collect £200.

The EU courts have recently handed down a number of decisions clarifying what does and doesn’t constitute ‘bad faith’ when it comes to trade mark applications.

WHAT IS BAD FAITH?

First, the concept of bad faith is broader than deliberately attempting to register someone else’s sign as a trade mark for yourself.

Second, it may constitute bad faith if you attempt to register a trade mark that you have no intention to use, but only if you have a dishonest intention to undermine someone else’s rights.

Third, attempting to register a trade mark for the purpose of parodying another brand, or evening annoying another brand owner, may not constitute bad faith.

Fourth, attempting to register a copyright work as a trade mark may constitute bad faith.

THE MONOPOLY CASE:

Most recently the EU General Court, handed down its decision in the Monopoly case.

Hasbro, the owner/publisher of the Monopoly game, filed trade marks in 1996, 2008 and 2010 for MONOPOLOY as a word mark in various different classes of goods and services.

Then, in April 2010, it filed another application it filed another application cover goods already covered by the earlier trade marks filed in 1996, 2008 and 2010.

USE IT OR LOSE IT:

Where a trade mark is more than five years old, the trade mark owner must proof that the mark is actually being used in relation to each and every good and service for which the trade mark is registered. This request for  proof of use usually comes in the context of opposition or cancellation proceedings.

In the Monopoly case, it transpired that the main reason Hasbro filed the April 2010 trade mark was to avoid having to provide evidence of use of the mark.

THE ‘BAD FAITH’ SAGA CONTINUES:

The EU General Court was satisfied that repeatedly filing the same trade mark with the intention of ‘resetting the five-year clock’ and avoiding having to submit proof of use was evidence of bad faith.

The court also made the following points in relation to trade mark applications filed in bad faith:

First, good faith is presumed until the contrary is proven. Once the presumption is rebutted, the applicant must provide a plausible explanation for the application.

Second, even if seeking to avoid having to submit proof of use is only one reason for the repeat filing, the other legitimate reasons will not necessarily make the overall strategy acceptable.

Third, the fact that the applicant may not in fact have obtained the advantage intended to be obtained is not, in itself, relevant to the bad faith assessment.

Fourth, the fact that the repeat filing was not dong just before the expiration of the five-year use period, and therefore did not result in a long extension or a significant advantage, is irrelevant.

Fifth, the fact that the repeat filing strategy may be common in the industry or undertaken on the advice of counsel is irrelevant.

BRIFFA COMMENT:

Courts have always had difficult defining bad faith as a concept and have traditionally been reluctant to lay down clear criteria for what does and doesn’t constitute bad faith. The oft repeated mantra is that bad faith must be the subject of an overall assessment taking account of all the relevant factors of a particular case.

However, as indicated above, the EU courts have recently been prepared to nail their colours to the mast (a bit) and provide some principles and guidance concerning the trade mark filing practices that are and are not acceptable under EU law. It remains be seen if/how the UK court will incorporate these principles into UK law.

Businesses wishing to protect their trade mark portfolios should always take specialist advice in connection with any new trade mark filing, as well as the overall maintenance and management of their trade mark portfolios.

Briffa are specialists in intellectual property law and practice. If you would like to arrange a free consultation with one of our solicitors, please contact us on info@briffa.com or 020 7096 2779.

Written by Éamon Chawke, Partner