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Hot Topics for Sydney 2017 –

Bad faith trademarks

Bad faith trademarks

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• Hot topics for Sydney 2017

• Introduction of Study Question

Eléonore Gaspar Duclos, Thorne, Mollet-Viéville & Associés

Paris, France

Paris Convention

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• Article 6 septiesRegistration in the name of the agent or representative of the proprietorwithout the latter’s authorization

• Article 6 bisNo preclusion for acquiescence in case of bad faith« (3) No time limit shall be fixed for requesting the cancellation or the

prohibition of the use of marks registered or used in bad faith. »

Applications in Brazil

EU provisions

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• Directive No 2015/2436Article 4(2): A trademark shall be liable to be declared invalid where the applicationwas made in bad faith by the applicant. A member state may also provide that suchtrade mark is not to be registered.Article 5(4): “Any member state may provide that is not to be registered … where …(c) the trade mark is liable to be confused with an earlier trademark protectedabroad, provided that, at the date of the application, the applicant was acting in badfaith.” (optional)

• EUTM Regulation No 207/2009Article 52 (1)(b): “1. A Community trade mark shall be declared invalid on applicationto 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 thetrade mark.”

Absolute ground and possible relative groundNo definition of what constitutes bad faith

Other references to bad faith

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• Specific provision regarding the trademark filed by an agent or representative in his own name without the proprietor’s autorisation

Directive : article 3.3 (b) and article 13

Regulation : articles 8.3 & 18

• Exclusion of preclusion due to acquiescence in cases of bad faith

Directive : Article 9

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What constitutes bad faith ?Judgment of 27/06/2013 C-320/12, Malaysia Dairy ECJ

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What constitutes bad faith ?Judgment of 11/06/2009, C-529/07, Lindt Goldhase ECJ

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Concept of bad faithApplicable criteria in the EU?

At the time of filing of the application

Autonomous concept of EU law

Which must be given a uniform interpretation in the EU

Overall assessment

An overall assessment of all relevant factors, particularly :

1. Identity or similarity of the signs

2. Knowledge of use by a third party

3. Dishonest intention/Intention of unfair competition

- Other factors

Degree of legal protection enjoyed by the third party’s sign and by the sign for

which registration is sought

The nature of the mark applied for

Not sufficient in itself

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What constitutes bad faith ?

Decision of 02/10/2015, R 2431/2013-2, CKL HOLDINGS, EUIPO(2nd Board of Appeal)

Baidu

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• When is bad faith relevant for EUTMs ?- as an absolute ground in invalidity proceedings

- not in examination or opposition proceedings

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FRANCE• Fraus omnia corrumpit

• Article L712-6 IPC : action to claim ownership in case of fraud

“Where registration has been applied for, either fraudulently withrespect to the rights of another person or in violation of a statutory orcontractual obligation, any person who believes he has a right in themark may claim ownership by legal proceedings.

Except where the applicant has acted in bad faith, such action claimingownership shall be barred three years after publication of theapplication for registration”

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France : EXAMPLE OF BAD FAITH

• Lamborghini Holding v. Red Bullto prevent cancellation because of non use

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UNITED STATES • BAD FAITH

where one intentionally selects a mark to trade upon the goodwillassociated with another’s mark

not an independent ground for opposition orcancellation of a subsequent trademark

• FRAUD

when the applicant knowingly made a false material representation with the intent to deceive the USPTO

independent ground

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• EXAMPLE OF BAD FAITH

UNITED STATES

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JAPAN• Article 4 (1) (xix) : trademarks identical or similar to another

person’s well-known trademarks and used for unfair purposes

- even if the trademark is only well-known abroad

• Article 4 (1) (vii) : trademarks filed fraudulently

• Article 53 bis : trademarks filed by agents

• EXAMPLE OF BAD FAITH

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CHINA• New Chinese trademark law

(adopted in 2013 and entered into effect on May 1, 2014)

– good faith principle

– registrations by agents, representatives and others who have business relations with the owner of the unregistered mark

– Bad faith registration by illicit means of a trademark with certain reputation already used by another party

– specific measures against bad faith filings under certain circumstances

• EXAMPLE OF BAD FAITH

BRUNO MANETTI

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