18 September 2020
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The recent Sky v SkyKick case has put a renewed focus on the issue of “bad faith” at the UK IPO. This article looks briefly at some recent bad faith cases from the UK IPO, to see if there are any new developing trends. Readers might also be interested to read our review of the recent EU IPO decision relating to the Banksy “Flower Thrower” trade mark, which has a bad faith element.

AIR CORSICA (Decision 0/083/20)

Mewburn Ellis acted for the airline Air Corsica in these consolidated Opposition and Cancellation proceedings. Air Corsica applied to cancel two earlier registrations for AIR CORSICA on various bases, including a claim of Bad Faith. In response the owner of the registrations opposed our client’s own application to register AIR CORSICA.

The UK IPO held that bad faith was established, and the earlier registrations were cancelled. This was on the basis that there was no evidence that the owner of the earlier registrations had any intention to use the trade marks, as the owner appeared to have no experience in aviation transport, and had done nothing to establish an aviation business over several years. Instead the conduct of the owner indicated that the purpose of the registrations was to disrupt Air Corsica’s business, or to pre-empt Air Corsica’s entry into the UK market.

MASTERCHEF (Decision O-017-20)

The owners of registered rights in the trade mark MASTERCHEF (a well-known televised cookery competition) opposed a later application for the mark MASTER CHEF in respect of various food products. In response, the applicant applied to cancel one of the earlier registrations for bad faith, claiming that the owner had no intention to use trade mark on anything other than a TV programme.

The interesting point here is that one of the registrations being attacked was a refiling of a trade mark that had previously been partially cancelled for non-use. On the face of it, this could have been an indication of bad faith, but the owner was able to prove that 1) they had documented plans to use the mark more widely, and 2) it is common for successful TV programmes to have merchandising product ranges. Therefore the fact that there had been a successful non-use cancellation previously did not mean that a subsequent application for the same mark lacked intention to use.

SOHO ROOMS Decision O-343-20)

This case involved multiple consolidated proceedings involving the trade marks SOHO ROOMS on one side, and SOHO HOUSE, SOHO WORKS and SOHO BEDROOMS on the other. The application to register SOHO ROOMS was opposed based on SOHO HOUSE and SOHO WORKS, and in response a counter-opposition was filed against SOHO BEDROOMS, including a claim to bad faith.

The UK IPO held that the opposition against SOHO ROOMS was successful in part but rejected for some of the less relevant services.

However the UK IPO also upheld the counter-opposition against SOHO BEDROOMS based on a claim to earlier unregistered rights in SOHO ROOMS (and other SOHO marks) and on a claim of bad faith.

On the bad faith point, the UK IPO held that in view of the history between the parties, it was clear that SOHO BEDROOMS was filed in the knowledge that it would “step into the trade mark and business space” occupied by the other party. The applicant was unwilling or unable to provide any business reasons to explain why this particular trade mark had been filed, so in the circumstances the UK IPO was willing to find that it had been filed in bad faith.

BLACK TACK (Decision O-334-20)

An application for BLACK TACK in classes 1 and 17, for various adhesive related products was opposed by the owners of the well-known BLU-TACK mark, used and registered for many years in respect of reusable adhesive putty.

The opposition based on the earlier rights was upheld, but an interesting argument was run under the bad faith claim. The owners of BLU-TACK claimed that there was no intention to use BLACK TACK for the Class 1 and 17 adhesives, but that the applicant was in reality interested in adhesive products in Class 16 (based on the applicant’s website). In addition it was claimed that by not filing in the correct class, the applicant was acting in bad faith by attempting to abuse the trade mark system by deliberately mis-classifying their products, in order to avoid conflict with the BLU-TACK marks.

The UK IPO dismissed the bad faith claim, on the basis that there was no evidence that the BLACK TACK trade mark would not be used on the class 1 and 17 products in the future, as the products were not that different to the applicant’s current business as to make this unlikely. There was no evidence to show that the applicant’s decision to file in class 1 and 17 was not for genuine commercial reasons.

PROCUL HARUM (Decision O-047-20)

This cancellation action involved two founders of the music group PROCUL HARUM, famous for the song “A Whiter Shade of Pale” released in 1967.

In 1990 Keith Reid registered the trade mark PROCOL HARUM in his sole name. That registration was challenged by Gary Brooker who, amongst other grounds, claimed that the trade mark was filed in bad faith since it was filed only in Mr. Reid’s name.

The UK IPO held that bad faith was not established. A key point here is that the point of time to consider bad faith is the date of filing the application. In this particular case, the evidence was not sufficiently strong to show that when the application was filed in 1990 Mr. Reid was acting in bad faith. Although Mr. Brooker claimed that his relationship with Mr. Reid had soured substantially, the existence of subsequent bad feeling and disagreement did not mean that the application had been filed in bad faith at an earlier date. Mr Reid was able to give evidence to explain why he believed that he was acting correctly, and to show that he had never sought to use his registration against Mr. Brooker’s use of the trade mark PROCOL HARUM in any way, or to use it as leverage against Mr. Brooker.

As a side note, Mr Reid also offered during the proceedings to add Mr Brooker as a joint owner of the registration, but the UK IPO pointed out that such a transaction could not be dealt with in opposition proceedings, but would need to be agreed between the parties and filed separately. As of the date of writing this summary, the UK trade mark is still on the register solely in the name of Mr. Reid.

Conclusion

What comes out from this brief review is that there is no consistent trend to bad faith claims, other than they usually relate to interesting and challenging factual situations. The other trend that can be seen from reading the decisions in detail is that the thinking and reasoning of the Courts in Sky v SkyKick has very much already become one of the UK IPO’s standard reference points for assessing bad faith, and is being applied not only to issues involving lack of intention to use, but also in the assessment of the state of mind of the applicant when filing the trade mark originally.

Edmund is an IP Director and Chartered Trade Mark Attorney at Mewburn Ellis. He specialises in trade mark work, dealing with a wide range of issues including prosecution of applications, opposition, revocation and invalidity actions in the UK and internationally outside the EU. Edmund has extensive experience of managing international portfolios of trade marks for multinational companies, as well as smaller companies or individuals. He is highly experienced in negotiating and concluding settlement agreements and in conducting hearings and appeals before the UKIPO. Edmund has also taken cases to the European Court of First Instance and has successfully reclaimed domain names for clients using Domain Name Dispute Resolution Proceedings.
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