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Strategies for dealing with bad faith use of trade marks

Attendees at a panel session at the AIPPI Congress received some advice on how to deal with a bad faith use of their trade marks

Tobias Cohen Jehoram from De Brauw Blackstone Westbroek in the Netherlands analysed two CJEU cases involving bad faith: Lindt v Hauswirth in 2009 and Malaysia Dairy v Ankenævnet for Patenter og Varemærker in 2013.

In the latter, Yakult claimed Malaysia Dairy had registered a trade mark in Malaysia and a shape mark in Denmark similar to its small plastic bottle for a milk drink in bad faith. An important facet of the CJEU decision was that it determined that the applicant’s knowledge that a third party is using a conflicting mark is not in or of itself bad faith. It said that in order to establish bad faith it is necessary to take into account all relevant factors at the time of filing the application.

Cohen Jehoram gave some advice for dealing with bad faith applications and ­registration. “Make sure you have sufficient evidence,” he said. “The threshold for proving bad faith is high.”

The applicant’s intention is a subjective factor that needs to be proven by means of objective evidence. If possible, provide materials such as emails and other correspondence that show the applicant knew or should have known about your mark and his intention at the time of filing, he advised.

Cohen Jehoram warned it is impossible to prove beyond doubt that the CTM proprietor possessed the necessary mens rea when filing to register the contested mark, but the burden of proof can shift when enough probabilities are shown.

Danny Awdeh of Finnegan began his presentation by highlighting US presidential hopeful Donald Trump last month asking for a website called to be taken down on the grounds that it infringes his trade marks and was registered in bad faith. He then analysed four Trademark Trial and Appeal Board cases in the US dealing with bad faith: L’Oreal v Marcon in 2012, Telefonos De Mex v Estrada in 2010, Edom Laboratories v Lichter in 2012, and Taiwan Semiconductor Manufacturing v Semiconductor Manufacturing International in 2010.

Some bad faith uses can be fairly blatant. In TelMex, Estrada alleged that he intended to use the mark AUDITORIO TELMEX on facilities for events such as sports. He claimed to have never heard of the opposer even though he had lived in Mexico for 30 years and lived 10 miles from the Auditorio Telmex arena.

“So the TTAB found he had been so disingenuous and it was so obvious he was trying to trade off the reputation of TelMex they found Estrada exhibited ‘not only bad faith but a general lack of respect for the application and opposition process’,” related Awdeh.

Awdeh gave some helpful strategies for dealing with bad faith. These cases are highly fact intensive so the burden is on the plaintiff to prove the facts, he said.

Bad faith filings can be addressed through opposition/cancellation proceedings before the TTAB and litigation in federal court. But the TTAB only has the authority to decide registration issues, so if a trade mark owner would like an injunction or damages, it will need to pursue relief through federal courts.

He said the best evidence of bad faith or fraud usually comes from the applicant or registrant itself. “Trade mark owners should take early discovery to obtain documents and written admission surrounding the selection of the mark at issue,” he said. In addition, a live deposition may reveal motives indicative of bad faith or fraud.

Mariangela Sampaio from Unilever Brasil noted a number of cases in this country. These included Speedo suing a former partner and an Apple case against the Brazilian registrant for IPHONE.

She gave several pieces of advice for protecting trade marks against bad faith. “Whenever possible try to seek the well-known status of the trade mark,” was one of her suggestions. “In Brazil it is possible to seek well known status through a specific procedure.”

Another strategy was to check what other registrations those you believe are acting in bad faith are owned by those. If they have a large number of registrations that appear to have been made in bad faith this could help your case. “Evaluate what other trade marks and publications the company involved in the conflict has in order to check whether you could use this argument in your defence,” said Sampaio.

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