CHILDLIFE

CHILDLIFE (Murray Colin Clarke v TNSG Health Co Ltd) offers an illustration of how the UKIPO approaches bad faith where a trade mark filing arises from a long-standing commercial relationship that has broken down.

The applicant is the creator of the CHILDLIFE range of nutritional supplements, sold worldwide since the 1990s. In 2010, to support expansion in Asia, it appointed TNSG as its exclusive distributor in China, Hong Kong and Macau under a series of agreements. These agreements governed TNSG’s use of CHILDLIFE IP and expressly prohibited TNSG from registering CHILDLIFE marks in any way (including any translations or transliterations).

In 2021, the applicant discovered that TNSG had, without consent, applied for and secured a UK registration in 2019 for the Chinese transliteration of CHILDLIFE (童年时光), which the applicant had been using in Asia since 2012. It sought invalidation on bad faith after learning of the filing when TNSG launched an invalidation action against its own UK registration for the same Chinese characters.

The UKIPO assessed whether the filing had been in bad faith by asking three questions:

1. what motive was alleged
2. whether that motive, if established, would amount to bad faith; and
3. whether the evidence proved it.

The applicant argued that TNSG was fully aware of its ownership of the Chinese transliteration after many years acting as their exclusive distributor, and could not reasonably have believed it was entitled to register the mark for itself. It pleaded that TNSG had applied to misappropriate goodwill, obstruct its UK entry, extract payment and position itself as the applicant’s UK distributor. The hearing officer held that such a motive, if proven, would amount to bad faith for all goods.

The applicant filed extensive evidence charting the development of the CHILDLIFE brand from 1996, its global distribution since 1997, and its adoption and consistent use of the Chinese characters as the transliteration of CHILDLIFE from 2012 across all goods sold in China, Hong Kong and Macau.

It also demonstrated the depth of TNSG’s knowledge: TNSG first approached the applicant in 2009, had seen the transliteration used in the marketplace, and had managed CHILDLIFE products bearing the Chinese transliteration throughout its role as exclusive distributor.

The evidence further showed that TNSG had repeatedly acknowledged that the applicant created the Chinese transliteration and owned the associated IP. It also revealed that, less than three weeks after the first distribution agreement was signed, TNSG applied to register the Chinese characters in China without the applicant’s knowledge or consent, followed by another unauthorised filing in Hong Kong. These acts later came to light and contributed to the breakdown of the commercial relationship in 2018.

The applicant’s evidence was found to be persuasive. TNSG, by contrast, filed no evidence in chief, relied on bare denials and offered no credible commercial rationale for filing the application.

The hearing officer concluded that the filing was inconsistent with honest commercial practices. By securing a UK registration for a mark identical to one created and used by the applicant, TNSG would have placed itself in a position to control or restrict use of the mark in the UK, despite having no legitimate basis for doing so.

The filing was viewed as an attempt to gain a strategic advantage rather than to protect a genuine trade mark right. TNSG’s inability to explain why it sought protection for a Chinese-language version of a brand it had not created, did not own and had only ever used as a distributor, reinforced that finding.

TNSG’s registration was therefore invalidated in full on grounds of bad faith.

SANDOKAN

Much like its fictional namesake, SANDOKAN (Katroi LLC v EUIPO) involves a calculated manoeuvre: the contested trade mark was used strategically to block third parties and to out-sail the non-use regime.

Background

The registered proprietor owned an earlier international registration designating the EU for the word mark SANDOKAN covering goods in classes 9, 16, 25 and 28. The invalidity applicant a TV production company, publicly announced plans to produce a new television series entitled Sandokan, inspired by Emilio Salgari’s novels about the pirate hero of the same name.

Following this announcement, the proprietor sent a warning letter to the applicant alleging trade mark infringement. Importantly, the letter did not explicitly request cessation of the alleged infringement, but instead proposed settlement discussions. In its response, the applicant rejected the infringement claim, pointing out that the international registration did not cover services for TV/film production in class 41 and was vulnerable to non-use revocation.

Only five days after receiving this response, the proprietor filed a new European Union trade mark (EUTM) application for SANDOKAN. The EUTM covered the same or similar goods as the international registration and, in addition, services in class 41 relating to audiovisual and television production. The applicant attacked this new filing on the grounds of bad faith.

The international registration was subsequently revoked for non-use by the EUIPO. The decision is currently under appeal before the General Court in separate proceedings.

Ground 1: filing to obstruct a third party

The first ground of bad faith, upheld by the General Court, related exclusively to services in class 41, that is, those not covered by the revoked international registration.

The General Court emphasised several objective factors:

1. The proprietor was aware of the applicant’s concrete plans to produce a new SANDOKAN television series.
2. The warning letter did not seek immediate cessation but attempted to initiate negotiations. The General Court considered this indicative of an intention to obtain some form of advantage, rather than to enforce trade mark rights.
3. The timing was decisive: The EUTM was filed only five days after the applicant had rejected the infringement claim and expressly raised the issue of non-use.
4. Finally, the proprietor failed to demonstrate any honest commercial intention to use the mark for class 41 services. Its claim that it had been working on a SANDOKAN television project in the USA since 2016 was unsupported by evidence.

As a result, the General Court concluded that the EUTM filing for class 41 lacked honest commercial logic and was intended to create an obstacle to the applicant’s activities.

Ground 2: abusive re-filing to avoid non-use revocation

The second ground concerned the goods already covered by the international registration (classes 9, 16, 25 and 28). The General Court confirmed that the EUTM constituted an abusive repeat filing:

• The EUTM was identical to the earlier mark and covered identical or, at least, similar goods.
• The EUTM was filed immediately after the applicant had pointed out the vulnerability to a non-use attack.
• Relying on established case law, including MONOPOLY (T-663/19) and Pelikan (T-136/11), the General Court reaffirmed that re-filing a mark in order to artificially reset the five-year grace period for use may constitute bad faith.

Notably, the General Court confirmed that bad faith may also be established for similar goods. Limiting the assessment to identical goods would undermine the system and allow easy circumvention of the use requirement.

The General Court found that the re-filing strategy was designed solely to circumvent the consequences of non-use and, therefore, the objectives of the EU trade mark system.

Cross-case takeaways and reminders for trade mark prosecution strategy

Narrative is decisive: The UKIPO placed significant weight on the provision of a clear and consistent commercial narrative, and on the lack of one. For the General Court, the fact that the proprietor was unable to present a convincing commercial narrative backed up by evidence was an important factor.

Intention can be proven indirectly: Both the UKIPO and the General Court inferred intention from conduct, timing, knowledge held and the absence of any credible commercial rationale for the filings. In CHILDLIFE, the evidence established that TNSG had long-standing, detailed knowledge of the applicant’s brand and its Chinese transliteration, and demonstrated that TNSG could not reasonably have believed it was entitled to apply for the UK mark. In SANDOKAN, the timing and the chronology of events was crucial.

A single motive can taint the entire specification: The UKIPO confirmed that bad faith may apply across all goods where the motive is uniform. The General Court confirmed that re-filing a trade mark in bad faith can also affect similar goods and services.

Case details at a glance

Jurisdiction: United Kingdom
Decision level: UKIPO
Parties: Murray Colin Clarke v TNSG Health Co Ltd
Date: 20 October 2025
Citation: O/0977/25
Decision (PDF): dycip.com/UKIPO-O-0977-25

Jurisdiction: European Union
Decision level: General Court
Parties: Katroi LLC v EUIPO
Date: 03 September 2025
Citation: T‑47/24
Decision: dycip.com/GC-T-1-24

Related cases

MONOPOLY, T-663/19: dycip.com/T-663-19

Pelikan, T-136/11: dycip.com/T-136-11