‘Bad Faith Filing’ eroding Faith in Trademarks Worldwide

In Europe, a popular beverage company, Foodcare which currently captures 18% of the market share outrunning Red Bull was accused of Bad Faith Trademarks.

A former boxer Dariusz Michalczewski trademarked his nickname, ‘Tiger’ in Class 32. He worked in affiliation with the Foodcare, by authorising the latter to emboss his name and image on the ‘Tiger Energy Drink’. Owing to a tiff, Foodcare applied to trademark ‘T.G.R. ENERGY DRINK.’ The same was opposed by Tiger, on the grounds of likelihood of confusion and bad faith.

The two-year long legal rustle after being heard by three courts with more than a dozen court decisions, restricted Foodcare from conducting any commercial activity on the reputation and image of someone else. This case was presented by Karin Kuhl, Director, Operations Department, EUIPO, from Europe.

The ubiquity of Bad Faith Filing is the main concern of many Trademark offices worldwide. Representatives from five different countries came together with a view to formulate enforcement strategies to regularise bad faith filing menace.

# What is TM5?

TM5 is an outgrowth of the Trademark Trilateral. It is a cooperative framework initiated by five major trademark offices to mutually benefit each other by exchange of information to protect the interest of their respective trademark applicants.

The five TM offices are:

· Japan Patent Office (JPO)

· Korean Intellectual Property Office (KIPO)

· European Union Intellectual Property Office (EUIPO)

· State Administration for Industry and Commerce of People’s Republic of China (SAIC)

· Unites States Patent and Trademark Office (USPTO)

They compiled an exhaustive list of actual 50 case studies, 10 from each office on disputed trademarks which were filed or registered in bad faith, with an aim to use these case studies to curb the peril.

# What are Bad Faith TM?

There is no explicit definition; it contemplates on the intention of the applicant. It is a conscious act of dishonesty. When an applicant deliberately adopts and uses another’s trademark to make a profit from their goodwill.

Christopher Shen from SAIC, summarised the bad faith filing in five broad categories on the basis of some renowned cases in China.

· Alleged to copy, imitate or translate another applicant’s mark, whether or not registered in the home country or not.

· Trademark agent registers the trademark of the represented party in the owner’s name.

· Squatting of Trademark

· Someone’s personal name is registered

· Trademark Registration that has reached a certain ‘influence.’

Bad faith is ascertained primarily, from the date of filing of the intended application for a trademark. Evidence, if any are admissible at a later stage.

Gerard Rogers, Chief Judge of USPTO proclaimed that bad faith is a matter of difference of perspective, particularly if it is felt that infringer’s ‘heart was in the right place’, but the documentation was not done right.

An application is always presumed to be filed in good faith. Hence potent evidence is needed to highlight the bad faith by weighing the all the subjective and objective probabilities.

· Applicant’s mental state and intention at the time of filing

· Intention of a genuine use or to drive the competition off the market

· Applicant’s knowledge base regarding usage of the same mark by others

· The degree of similarity or distinctiveness of the trademark of a third party.

# A way out of this menace

TM5 reported that there are usually two channels formulated to deal with such malpractices.

· The opposition of Trademark: When a Trademark application is published in the Official Gazette, any person may file an opposition enumerating a brief justification within the prescribed time frame.

· Invalidation Action of Trademark: In case the application made in bad faith is registered despite any violation. The interested party can file an invalidation action. The trademark will become void ab initio, i.e.will be invalid from the very beginning.

· Cancellation of Trademark: It is similar to the invalidation procedure, an interested party can seek cancellation of a registered Trademark if its similar to existing mark intentionally and causes confusion to the customers.

In Korea, there was a significant drop in such cases. Kijoong Song, deputy director at KIPO. In many cases, it was discovered that trolls get a trademark registered without any material intention to trade rather use it for claiming licensing fee or damages.

A new system was introduced to verify the Intention to use in case of any doubt and a fee is charged on the designation of an excessive number of goods.

Through the exchange of such first-hand information on practices of trademark mechanism, such strategic efforts are made to harmonise and improve the procedures. A systematised effort is made by the TM5 to promote a sense of cooperation and collaboration to curb any malfunctions.

About the Author,

Nimisha Gupta

has an unleashed zest for everything creative. Is a budding writer, inspired from coffee beans to pen down, when the world sleeps. It’s not about the destination rather the journey. #MusicBuff #Coffeeholic #ChocoManiac #Trailblazer.. Affiliated with QuickCompany which deals in Company Registration, Trademark registration,Trademark Public Search, Service Tax Registration, MSME, Import -export Code and Other Legal Activities.

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