UK trade mark applications and bad faith

Published

May 13 2022

Written By

Senior Associate
UK

I am a brand protection lawyer in the London Intellectual Property team. I help clients build, exploit, enforce and rationalise portfolios of trade mark and design rights around the world. I also handle related disputes and contentious proceedings.

Practices

Sectors

Media, Entertainment and Sport

Regions

Western Europe

Countries

On 30 March 2022, the UKIPO’s Appointed Person reached a decision highlighting that ‘bad faith’ cannot be presumed by the UKIPO in trade mark applications unless it is raised during an opposition or invalidity action by a concerned third party. In the most simplistic terms, ‘bad faith’ can be defined as when an individual or company acts with dishonesty and a behaviour which falls below normally acceptable commercial standards. It is a fairly broad concept though, where all factors of significance relevant to the case will be taken into account.

The decision considered an appeal after it was presumed that an Applicant’s celebrity football player applications were in ‘bad faith’. The Appointed Person referred the matter back to the UKIPO; holding that it was not for the UKIPO to presume bad faith, and, given that bad faith had not been raised by a concerned third party during opposition or invalidity proceedings, the Registrar should have instead raised the matter with the court.

Please read the full article on BrandWrites here

Authored by Rory Coutts and Thomas Hooper