The European Union Intellectual Property Office (EUIPO) has issued a Common Practice document known as CP13: “Trademark Applications Made in Bad Faith.” This document outlines harmonized criteria for assessing whether a trademark application has been filed in bad faith.
The core objectives of CP13 can be summarized as follows:
Establishing a common understanding of the concept of bad faith in trademark applications.
Creating shared terminology and criteria for evaluating bad faith, including both legal and factual aspects.
Reaching consensus on general factors relevant to the assessment of bad faith.
Assessment of Bad Faith
According to CP13, the existence of a dishonest intention on the part of the applicant at the time of filing is a mandatory element for determining bad faith. The assessment focuses on whether the application was filed with the intent to gain an unfair advantage or to misuse the trademark system.
Bad faith may be established under two main categories:
1. Misappropriation of Third-Party Rights
This occurs when the applicant seeks to unfairly benefit from the reputation, business relationship, or prior rights of a third party. Examples include:
Attempting to free ride on the reputation of a third party's earlier right(s),
Usurping the trademark rights of another party,
Creating a misleading impression of continuity, inheritance, or association with a historically renowned trademark, company, or person.
2. Abuse of the Trademark System
This refers to filings that do not serve the purpose of genuine use but aim to:
Block third-party applications and obtain a strategic or economic advantage,
Build a trademark portfolio without honest commercial rationale,
Avoid use obligations by extending the five-year grace period,
Circumvent cancellation risks associated with earlier non-used trademarks.
The presence of bad faith is assessed case-by-case, with consideration of the following factors:
The applicant’s knowledge of third-party rights,
Similarity between the applied mark and existing rights,
The commercial logic behind the filing,
Patterns of previous conduct,
Requests for compensation or coercive negotiation,
Whether the filing is part of a broader dishonest strategy.
Evaluations are made objectively and must be supported by clear and convincing evidence.
Examples from EUIPO Practice
i. Vita Cola GmbH v. VITAL Cola: EUIPO held that the applicant had no genuine intent to use the trademark and aimed to exploit the reputation of the well-known "Vita Cola" brand. The application was invalidated on grounds of bad faith.
ii. MONOPOLY: The General Court found that repeated filings of the MONOPOLY mark by Hasbro constituted bad faith, as they were intended to circumvent use obligations and obtain extended protection unjustifiably.
Reflection in Turkish Trademark Law
Under Turkish law, bad faith is expressly recognized as a ground for refusal or invalidation of trademark registration pursuant to Articles 5(1)(f) and 6(9) of Industrial Property Law No. 6769.
In practice, the Turkish Patent and Trademark Office and the Court of Cassation have developed criteria similar to those in CP13, including:
The existence of a prior commercial relationship,
Evidence of prior use,
Repetitive filings,
Absence of genuine intention to use the mark.
Turkish decisions provide concrete illustrations that align with CP13 principles:
i. In a 2014 decision by the 11th Civil Chamber of the Court of Cassation (E. 2013/17104, K. 2014/14018), 1 the court found bad faith in a case where a former distributor registered a sign identical to the claimant’s trade name and product logo after the parties' business relationship ended. The mark was later invalidated based on bad faith, and the claimant was awarded compensation for the commercial disruption caused.
ii. In a 2019 decision by the 11th Civil Chamber of the Court of Cassation (E. 2019/359, K. 2019/7279), 2the court found bad faith where the defendant registered the mark "ANL CHOCO LEXUS," exploiting the fame and distinctiveness of the well-known "LEXUS" trademark. The registration was held to cause confusion and dilute the claimant’s mark.
The court invalidated the defendant’s mark, confirming the bad faith registration aligned with CP13 principles concerning abuse of a famous mark’s reputation.
Conclusion
Bad faith in trademark applications needs to be looked at as a whole, based on all the facts of the case. CP13 offers a clear and practical framework that helps ensure consistent decision-making. The closer alignment of Turkish practice with CP13 principles improves legal certainty and contributes significantly to the safeguarding of fair competition.
Sources
https://www.tmdn.org/publicwebsite/#/practices/2537136
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1 https://www.lexpera.com.tr/ictihat/yargitay/11-hukuk-dairesi-e-2013-17104-k-2014-14018-t-18-9-2014
2 https://www.lexpera.com.tr/ictihat/yargitay/11-hukuk-dairesi-e-2019-359-k-2019-7279-t-18-11-2019
