Bad faith
The earlier trade mark, a short one consisting of letters and numbers, was registered in Class 32 and had been used on beverages within the scope of the registration for many years. One of the former distributors of the trade mark proprietor filed applications in various forms and stylisations seeking to register the trade mark in its own name. In the ongoing judicial proceedings between companies in various countries in which they operate, it has been determined that the former distributor acted in bad faith with respect to its applications.
The first application filed by the distributor before the TPTO is an exact copy of the trade mark owner's and consists of an image of an aluminum can bearing the trade mark. The trade mark application covers beverages in Class 32 as well as empty aluminum cans in Class 06. Oppositions were lodged invoking articles 6/1 and 6/9 of the Industrial Property Law ("IPL"), relying on the trade mark owner's previous marks in Class 32.
The opponent claimed that there was a likelihood of confusion between the marks. It was also argued that the applicant was their former distributor and had thus acted in bad faith as the trade mark applied for was identical to that of the opponent’s. The opposition was accepted by the first instance examiner and later, upon appeal, was examined by the Appeal Board. The Appeal Board held that the application contained the opponent’s use of the trade mark and that the goods covered by the trade marks were related. The Board accepted both the likelihood of confusion and bad faith arguments presented by the opponent and rejected the application in its entirety.
The applicant later filed two different applications covering only empty aluminum cans in Class 06. One had copied the stylisation of the opponent’s mark and the other only included an additional underline. These were also opposed based on the likelihood of confusion between the trade marks and the bad faith of the applicant.
Stylised applications
Regarding the stylised application, the opposition was accepted by both the first instance examiner and the Appeal Board. The Board emphasised that the applicant was the former business partner of the opponent, that the application copied the opponent’s use, and that the empty aluminum cans in Class 06 were complementary to the opponent’s beverages in Class 32.
On the other hand, both the first instance examiner and the Appeal Board rejected the opposition to the trade mark application which did not contain any stylisation or device element. The decision of the Appeal Board was not justified in detail. However, it stated that although the trade marks were similar, the goods covered by the trade marks could not be considered similar. The Board also argued that the opponent had failed to prove that the applicant was in bad faith. In other words, the Board did not take the previous applications or reiterative bad faith of the applicant into account.
The rejection of the bad faith claim came against the backdrop of the applicant’s previous trade mark applications which had been rejected by the TPTO on the basis of bad faith and compelling evidence in the file proving the applicant was the former distributor of the opponent.
Business relationships
According to the established case law of the Court of Cassation, any attempt to register a trade mark by a person who has had a business relationship with the trade mark owner is considered to be in bad faith.[i] The Court of Cassation also stipulates that in cases where bad faith is proved, the trade mark should be invalidated even if it covers different goods and services.[ii] This is in contrast with the dispute at issue in which it is accepted that the goods covered by the trade marks are complementary goods.
The fact that the TPTO contradicted its previous decisions by rejecting the bad faith claim in this case reveals that it has adopted a narrow approach. It is expected that courts will adopt a broader approach by analysing the evidence in more detail if the trade mark is subject to an invalidation action.
FICPI’s view and involvement
- FICPI is the only organisation exclusively for independent IP attorneys. The organisation uniquely combines education and advocacy on topics around patents and trade marks, with a focus on developing the professional excellence of its individual members. FICPI brings independent IP attorneys around the world together to connect, share knowledge and grow.
- Events such as FICPI’s 2023 Open Forum (4-7 October, London) offer the opportunity to attend technical sessions, and to meet and further discussions in congenial surroundings.
[i] The decisions of the Appeal Court 11th Civil Chamber dated 25.01.2016 and numbered 2015/6389 E., 2016/739 K.; dated 11.07.2011 and numbered 2010/785 E., 2011/82627 K.
[ii] The decision of the Appeal Court 11th Civil Chamber dated 01.04.2022 and numbered 2020/7912 E., 2022/2268 K.