INTA 2019: International judges discuss bad faith rules and developments
Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX
Copyright © Legal Benchmarking Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

INTA 2019: International judges discuss bad faith rules and developments

dark-world-map-168x112

Judges from Germany, Canada, China, the EU and the Andean Community discussed their stances on bad faith marks at INTA’s Annual Meeting in Boston

dark-world-map-300

Bad faith applications were a hot topic for a panel of international judges yesterday. Inspired by efforts to harmonise trademark laws and the tremendous rise in trademark registrations by Chinese applicants – both in China and abroad – many countries are updating their trademark laws to specifically address bad faith filings. There are over 18 million registered marks in China, about 6,500 of which have been filed via the Madrid System.

In Germany, former federal patent court judge Marianne Grabrucker said that witnesses are accepted in cases where a bad faith argument is being made. “Normally we don’t have witnesses in trademark cases,” she said. However, “it’s very difficult to get a positive decision on bad faith in Germany,” so witnesses can be necessary to provide proof to meet the high standard.

For countries within the jurisdiction of the Court of Justice of the Andean Community – Colombia, Ecuador, Peru, Chile, and Bolivia – judge Hugo Gómez Apac said that “we accept every form of proof regarding bad faith trademarks,” including contracts, testimony, and witnesses.

In Canada, bad faith will be a new ground for opposition once amendments to the Trademarks Act come into effect on June 17. Managing IP covered the amendments and their implications here. Unfortunately, no one knows how the term “bad faith” will be interpreted. Even Michael Manson, judge at Canada’s Federal Court, said: “We’ll see what happens.” On an encouraging note, he did assure attorneys that “bad faith marks will be thrown out before they get to the courts”. That is, CIPO will have a process to shut them down once they have been identified.

Andrej Stec, judge at the EU General Court, has a straightforward definition: “When there is bad faith, you simply see it. If you’re not sure, it’s not bad faith.” He added that applying for a mark that is technically available but used to be well-known in the '70s, for example, “could be considered as bad faith because there is still some goodwill attached to it”.

Bad faith in China

In China, bad faith trademark registrations are one of the top complaints from foreign brands. Managing IP covered the phenomenon here. In response to these concerns, China approved amendments to its Trademark Law on April 23, 2019 that specifically aim to address the issue. The amendments will take effect on November 1 this year.

Some important changes under China’s updated law include a new use requirement, increased punitive damages available in civil counterfeiting cases, and perhaps most importantly, punitive measures for bad faith actors – including applicants and trademark agents themselves.

Yuanming Qin, IPR judge at the Supreme People’s Court in China, acknowledged that China’s first-to-file system “can cause bad faith issues”. The amendments “will create a level playing field by forbidding the abuse of rights,” he said.

Among other changes, "malicious acquisition" and stockpiling of registrations will be seen as IP abuses. Qin assured the lawyers in attendance that “trademark rights are protected in China, no matter whether it’s foreigners or natives”. He pointed to the Qiaodan case as an example of successful enforcement by a foreign entity. Managing IP covered the case here.

more from across site and ros bottom lb

More from across our site

Keith Bergelt, CEO of the Open Invention Network, explains why AI technologies were not part of an update to its cross-licensing project
Kirkland & Ellis partners explain how they secured the dismissal of a patent case in which the other side had lied under oath
Managing IP understands the association had been considering other options, including Madrid or Vienna, after concerns were raised over Dubai’s positions on various rights
Chris Marando tells Managing IP that he's excited to work on PTAB matters at Perkins Coie, which recently hired another lawyer from his former firm
To mark Pride month, Darren Smyth, cochair of IP Out, says the legal profession must not forget that some members still face exclusion and hostility
Lawyers say the opening of the Milan central division this month is likely to boost activity in Italy, which has been modest so far
Sharon Urias tells us why she still has to explain the difference between copyright and trademarks
In the latest episode, Managing IP is joined by Gwilym Roberts and Lee Davies from the Chartered Institute of Patent Attorneys to discuss the UPC, IP ministers, diversity and more
Lawyers at Tomkins and Bomhard IP explain how they finally secured victory over McDonald’s in long-running ‘Big Mac’ trademark dispute
Technical excellence is paramount for clients looking to hire new advisers, according to a survey of nearly 29,000 corporate counsel
Gift this article