Bad faith or seizing an opportunity? Where do we draw the line?
Trade mark law allows brand owners to take action against a trade mark applied for in bad faith. But, what is meant by bad faith? The UK Intellectual Property Office (UKIPO) has rejected a trade mark opposition, deeming the trade mark application did not amount to bad faith.
In September 2018, PASTA GO (the applicant) applied to register the trade mark (as shown below) in class 43 (take away food and drink services). Mr Kamil Kruk (the opponent) opposed the application under section 3(6) of the Trade Marks Act claiming that the applicant’s mark was applied for in bad faith.
The opponent operates a chain of restaurants in Poland and claimed that the applicant was aware of his trade mark, and had visited one of the opponent’s premises in Poland and had then copied the business name and logo. The opponent alleged that the applicant was attempting to trade off the repute of the opponent’s business and block the opponent from entering the UK market. The opponent said he planned to expand the brand and business internationally.
The applicant had allegedly modified one of the opponent’s images and used it in a social media post. The opponent contacted the applicant in August 2018 regarding the misuse of the photograph. It was only when challenged that the applicant then sought to file an application in the UK, when it discovered that the opponent’s mark was only registered in Poland. Accordingly, the opponent argued that this behaviour fell short of the standards of acceptable commercial behaviour and the application was made in bad faith.
In response to the allegations of bad faith, the applicant said that the opponent subjected him to threatening behaviour and scare tactics to try and make the applicant change the name of his business. When the applicant realised that the opponent only had protection in Poland, he applied for the trade mark as a measure to keep the “name and health” of his business. His view was that since he was based outside Poland, he had legal rights to expand his business anywhere in Europe.
The relevant date for assessing whether a trade mark application was made in bad faith is the application date – in this case that was 13 September 2018.
The UKIPO considered whether the applicant knew of the opponent’s business and its mark at the relevant date. The answer to this question is yes. There was Facebook contact between the parties in August 2018. However, the hearing officer commented that merely knowing a trade mark is in use by another business in a different jurisdiction does not amount to bad faith, and is not conduct that falls below the standards of acceptable commercial behaviour. Trade marks are territorial in nature meaning that effectively protection is granted to the first to file.
The applicant’s motivation for applying for the mark was deemed to be an opportunity to gain a commercial advantage knowing that the opponent’s protection was limited to Poland and did not extend to the UK or Europe. The hearing officer did not view the applicant’s filing as being designed to prevent the opponent from using his mark nor as a pre-emptive strike to prevent him expanding his business in the UK market. Taking all this into account, there was no finding of bad faith, rather this conduct was deemed fair in the circumstances. The opposition under section 3(6) therefore failed and the application could proceed to registration.
This decision underlines the high evidential bar needed to succeed in proving bad faith. Merely knowing a trade mark is in use by a third party in another jurisdiction does not amount to bad faith.
Case details at a glance
Jurisdiction: United Kingdom
Decision level: UKIPO
Parties: Pasta Go (applicant) Kamil Kruk (opponent)
Date: 04 March 2020
View O/134/20 in full (PDF).