Bad faith, hope and a case about tea

Duncan J. Morgan | May 2017

When an application for a trade mark is filed in the UK, the applicant must make a declaration that they are either a) using the mark themselves or via a licensee, or b) have a genuine intention to use or license the use of the mark.

Applicants, and indeed practitioners, sometimes have little regard for this legislative quirk, and tend to file applications widely, often covering a much broader range of goods and services than those in relation to which use is anticipated.  For example, a business which produces shoes would typically file a British trade mark application in Class 25 to cover ‘footwear’.  However, they will often include clothing and headgear in the application also, even if they have no intention of offering such goods, as those appear in the same class and so they can be included at no additional cost.

As the law is interpreted and applied by the UK Intellectual Property Office and the courts at present, this rarely presents a problem for the owners of such rights.  Indeed, filing broadly increases the scope of protection of applications, assuming they are eventually registered, making them easier to enforce against third parties.  The UK IPO rarely refuses to register a mark of their own motion because they do not believe the Applicant had a genuine intention to use their mark for all the goods and services filed.

Nonetheless, this presents a little known, and, in our view, underutilised line of attack that clients can use to oppose trade mark applications proceeding to registration (or indeed to remove them from the register once granted). 

In a recent series of cases between Mariage Frères SA and TWG Tea Company Pte Limited, Beck Greener, on behalf of TWG, argued, amongst other grounds, that various applications or registrations of Mariage Frères should be refused/cancelled on the basis that they were filed in bad faith.  Specifically, we asserted that the Applicant misled the UK IPO when certain of their applications were filed, as they, a tea company, cannot have had a genuine intention to use the marks in relation to all of the goods and services covered.   For example, we argued that a company which only produces tea and tea-related goods cannot have had a genuine intention to use the mark in UK trade mark application no. 3010419 LUCKY TEA for all of the following:

“Class 21

Household or kitchen utensils and containers; teapots; tea services; tea balls, strainers, tea measures, infusers, tea filters, tea cosys [sic] of metal; tableware of glass, porcelain, earthenware, synthetic resin, terracotta; tableware of precious metal or coated therewith (except cutlery); tea canisters, caddies and urns; candlesticks and candelabra (candlesticks) of precious metal or coated therewith; trays and boxes for household use of precious metal or coated therewith.

Class 30

Coffee, tea, cocoa ; cocoa-, coffee-, chocolate- or tea-based beverages; non medicinal infusions; sugar, rice, bread, pastry and confectionary [sic], pancakes (foodstuffs); cookies; cakes; rusks; confectionary [sic]; chocolate; edible ices; honey, salt, mustard; vinegar, sauces (condiments); condiments; spices; dried plants and seeds, flavourings, other than essential oils, and mixtures of the aforesaid goods, for preparing non-medicinal beverages.”

During the course of proceedings, the Applicant's witness stated that the Applicant had indeed intended to use the mark across all the goods included in its application.  However, despite being invited to do so, the Applicant provided no substantiation or corroborating evidence to support this assertion.  The Hearing Officer refused to accept the Applicant's evidence.   He concluded that in the absence of any convincing explanation, the Applicant could have had no intention to use LUCKY TEA for any products other than tea and therefore found the Application had been filed in bad faith for the Class 30 goods struck through below:

Coffee, tea, cocoa ; cocoa-, coffee-, chocolate- or tea-based beverages; non medicinal infusions; sugar, rice, bread, pastry and confectionary, pancakes (foodstuffs); cookies; cakes; rusks; confectionary; chocolate; edible ices; honey, salt, mustard; vinegar, sauces (condiments); condiments; spices; dried plants and seeds, flavourings, other than essential oils, and mixtures of the aforesaid goods, for preparing non-medicinal beverages.

Interestingly, at present,  the UK IPO and courts take the view that applications can be filed in bad faith for certain goods, and not for others, rather than taking the view that the entire application should be refused/cancelled as it was predicated on a false declaration (a finding that the US authorities appear more willing to make).  Nonetheless, this provides a useful weapon to remove what is often the vast majority of the goods and services included in a third party application/registration, which is not dependent on the strength or otherwise of the Claimant’s own rights. Further, it suggests that in order to survive such a challenge, Applicants should have an intention to use their mark for the goods and services they claim, rather than a mere hope that they may so use their marks one day.