The concept of “bad faith” has no definition under the UK Trade Marks Act 1994 (“the Act”). It has however been the subject of discussion in various cases and is understood to have “moral overtones”[1] and at its core “includes dishonesty”[2] which “involves conduct which departs from accepted standards of ethical behaviour or honest commercial and business practices”.[3]
The UK Registry examines trade mark applications based on the criteria set out under the provisions of the Act and as part of its examination may raise absolute grounds of refusal ex officio, including under s.3(6) of the Act which states that any “trade mark shall not be registered if or to the extent that the application is made in bad faith”. However, in practice the UKIPO only raises bad faith objections where the mark applied for contains the name of a famous individual and even then only if an overall assessment is made that the application rebuts a presumption of good faith. The evidence intensive nature of proving bad faith does not lend itself well to Registry examination. For this reason, bad faith matters have often been left to inter partes opposition and cancellation proceedings as the burden of proof is on the party alleging bad faith because good faith is presumed otherwise (T-136/11 Pelikan).
In a decision last year issued by Mr. Geoffrey Hobbs QC (as he then was) sitting as the Appointed Person in HENRY/RONALDINHO (Appeal No. BL O/264/22)[4], the Registry’s ability to raise bad faith grounds ex officio at the examination stage was called into question. The applicant (Global Trade Mark Services Ltd) had applied to register 4 trade marks containing the names of famous footballers. The Registry initially refused all of the applications under s.3(6) of the Act on grounds that they had been applied for in bad faith which was later upheld by the Registry’s Hearing Officer for 2 of the marks, namely
Mr. Hobbs held that the Registry was wrong to refuse the trade mark applications on the ground that they contained the name of famous persons and had therefore been filed in bad faith. According to Mr. Hobbs, the Registry was not entitled to arrive at this conclusion ex officio as the finding was for all intents and purposes based on conflicts with earlier unregistered rights in famous names which the individuals in question (Ronaldinho & Henry) could have successfully raised themselves on relative grounds under s.5(4)(a) of the Act. The Registrar had “metaphorically speaking.. acted as ‘investigator-prosecutor-judge-jury-executioner’ in relation to a serious accusation which he himself had raised against a person entitled to the benefit of a rebuttable presumption of innocence” for which reason Mr. Hobbs found that the approach taken was “legally deficient” and “procedurally unacceptable”.
Following this decision, the UKIPO has now issued a practice amendment notice, namely “PAN 1/23: Practice for raising bad faith objections at the examination stage”: https://www.gov.uk/government/publications/practice-amendment-notice-123/pan-123-practice-for-raising-bad-faith-objections-at-examination-stage. This PAN amends the Registry’s previous practice for the raising of bad faith objections which was set out at paragraph 5.11 of the Examination Guide in the Manual of Trade Marks Practice. However, rather than follow the direction of Mr Hobbs, it seems that the amendment (copied below) is to merely give notice that the UKIPO will wait until the Supreme Court’s decision is issued in the Skykick case following the appeal from the Court of Appeal’s decision. The Supreme Court is due to hear the case later this month; the eagerly awaited judgment could have a significant impact on the law of bad faith as we know it.
“The IPO is aware that the decision of the Court of Appeal in the Skykick case referred to above has been appealed to the Supreme Court. This practice will be updated to the extent required following the Supreme Court’s judgment.”
We will keep you advised of developments as they arise.
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[1] Hobbs QC in DEMON ALE Trade Mark [2000] RPC 345 at [356].
[2] Lindsey J in Gromax Plasticulture Gromax Plasticulture Ltd v Don & Low Nonwovens Ltd [1999] RPC 367 at [379].
[3] Floyd LJ in Skykick UK Ltd and Another V Sky Ltd and Others [2021] EWCA Civ 1121 at [67].
[4] Decision available here
