If you are unlucky enough to come across a competitor that does not entirely play by the book and fights you with his bad faith trade marks – don’t loose your nerve. The provisions of Polish, EU and the vast majority of other jurisdictions around the world provide that the existence of bad faith at the time of filing is an absolute ground for refusal of protection or invalidation with retroactive effect. So, take a deep breath and fight back, because in addition to losing the bad faith trade mark, your competitor risks negative publicity and all the costs associated with a potential dispute before the relevant intellectual property office.
But what exactly is bad faith? And what must be shown before the IP office to block a bad faith trade mark application or invalidate the right already acquired in bad faith? Bad faith in trade mark applications is not defined or even described in any way in the EU trade mark legislation. It is possible, however, to find the common understanding of the general notion of bad faith in trade mark applications across different jurisdictions. For this purpose the IP offices of the European Union collaborate in the context of converging trade mark and design practices. Just recently they have agreed on Common Practice document on trade marks with the aim of providing a common understanding of the general notion of bad faith and other concepts, including terminology related to its assessment, factors and scenarios that may prove relevant in the assessment. The Common Practice document is made public with the purpose of further increasing transparency, legal certainty and predictability for the benefit of examiners and users alike. It provides a set of principles on how to assess bad faith in trade mark applications, irrespective of the type of proceedings in which it is assessed.
Here you will find a full text of the common practice:
Bad faith notion
The general notion of bad faith in trade mark applications presupposes the presence of a subjective motivation on the part of the trade mark applicant, namely a dishonest intention or other ‘sinister’ or dishonest motive, which will normally be established by reference to relevant, consistent and objective criteria. Therefore, this notion involves conduct that departs from accepted principles of ethical behaviour or honest commercial and business practices, which can be identified by assessing the objective facts of each case against such standards. There is no bad faith without a dishonest intention on the part of the applicant. For a finding of bad faith there must be:
(1) some action by the applicant which clearly reflects that it acted with dishonest intention when filing the trade mark application; and
(2) an objective standard against which such action can be assessed and subsequently qualified as constituting bad faith. Any claim of bad faith will have to be analysed by making an overall assessment of all the factual circumstances relevant to the particular case.
Aspects of bad faith
The following two aspects of bad faith may be differentiated:
(1) misappropriation of the right of the third party: where the applicant is targeting the interests of a specific third party;
(2) abuse of the trade mark system: where, even if a specific third party is not being targeted, the applicant applied for the contested trade mark for purposes other than those falling within the essential functions of a trade mark.
Rules of assesment
Presumption of good faith – it is for the claimant to prove the circumstances which substantiate a finding that the trade mark applicant had been acting in bad faith when it filed the application for registration of that trade mark.
The relevant point in time for determining whether there was bad faith on the part of the applicant is the time of filing of the application for registration. Facts and evidence dated prior to or subsequent to filing could also be taken into account, however, as they may contain useful indications for interpreting the applicant’s intention at the time of filing the application.
The applicant in bad faith – the presence of a possible link/connection between the applicant and any other natural/legal person that may have a real interest in filing bad faith trade mark application should also be taken into account.
Factors that are not mandatory
Identity or similarity of trade marks – bad faith provisions aim to prevent, in particular, misappropriation of rights of a third party or an abuse of the trade mark system. Thus, the fact that the rights at issue are identical or similar is just one on the many factors, that may influence the overall assessment of bad faith. When assessing identity or similarity under this factor, it may not be necessary to carry out a detailed examination of the visual, aural and conceptual similarities between the contested trade mark and the earlier rights, as it would be required for the purpose of finding likelihood of confusion. The purpose of the comparison would be to establish whether the bad faith trade mark and the earlier right are similar or not. For this, it may be sufficient to find a connection or a link between the trade marks at issue.
Identity or similarity of goods or services – existence of identity or similarity between the goods or services need not necessarily be established in order to apply bad faith provisions. Bad faith could also be established in those cases where the goods or services at issue are dissimilar.
Examples of eu-case law on bad faith misappropriation of a third party’s rights:
- “free-riding” on the reputation of the third party’s earlier right/s and to taking advantage of that reputation (14/05/2019, T-795/17, NEYMAR, EU:T:2019:329, § 51; 19/10/2022, T-466/21, Lio (fig.) / El Lio (fig.) et al., EU:T:2022:644, § 83);
- usurping the rights over the trade mark of the third party (11/07/2013, T-321/10, Gruppo Salini, EU:T:2013:372, § 32);
- creating a false impression of continuity or a false link of inheritance between the contested trade mark and a formerly renowned historic trade mark or a previously famous person/company/earlier right, which is still known to the relevant public (06/07/2022, T-250/21, nehera (fig.), EU:T:2022:430, § 68-69 (in this case, this type of dishonest intention was discussed, however, bad faith was not found).
Examples of EU-case law on bad faith abuse of the trade mark system:
- preventing registration of another trade mark applied for by a third party or deriving economic advantages from this blocking position (07/07/2016, T-82/14, LUCEO, EU:T:2016:396, § 145; 07/09/2022, T-627/21, Monsoon, EU:T:2022:530, § 36);
- strengthening protection of another right, which also belongs to the applicant and broadening the applicant’s portfolio of trade marks, without any honest commercial logic (28/10/2020, T-273/19, TARGET VENTURES, EU:T:2020:510, § 38-40);
- avoiding to furnish proof of use of the (applicant’s) earlier registered trade mark/s and by this extension of the five-year grace period (21/04/2021, T-663/19, MONOPOLY, EU:T:2021:211, § 71-74 – in this case, the applicant obtained the administrative advantage of not having to prove genuine use of the re-filed trade mark);
- avoiding consequences of cancellation such as partial or total revocation for non-use of the applicant’s earlier registered trade mark (13/12/2012, T-136/11, Pelikan, EU:T:2012:689, § 27, 50 – in this case, this type of dishonest intention was discussed, however, bad faith was not found).