Guidance on the assessment of bad faith in trademark applications

While EU trademark law lacks a precise definition of bad faith, recent case law from the European Court of Justice clarified the interpretation.

Aiming for consistency across Europe, a new common approach for IP Offices of EU Member States is introduced to address bad faith in trademark applications: Convergence Program 13 or simply CP13.

CP13 provides a framework for analyzing bad faith, focusing on two main faces of the concept:

1.         Misappropriation of third-party rights: this occurs when an applicant targets specific third parties to unfairly gain ownership of their earlier trademark rights, such as through parasitic behavior or breaching fiduciary relationships; and

2.         Abuse of the trademark system: this facet aims to prevent abusive registrations that undermine the purpose of trademark law, such as defensive registrations, re-filing and speculative filings.

The communication outlines common factors for assessing bad faith, including the mandatory consideration of the applicant's dishonest intention that must always be present. Also, a list of non-mandatory factors that can be assessed is formulated, such as similarity with and distinctiveness of the earlier mark, the previous relationship between parties, a request for financial compensation being made or a certain pattern in applicant’s behavior.

Furthermore, CP13 provides guidance on:

1.         the burden of proof: applicant's good faith is presumed and the burden of proof lies with the claimant. However, if objective circumstances suggest bad faith, the burden shifts to the applicant to provide plausible explanations for their actions. Silence from the applicant isn't necessarily indicative of dishonesty, but if the applicant provides no explanation, bad faith may be inferred.

2.         the relevant point in time: determining whether bad faith exists hinges on the intention of the applicant at the time of filing the application. Additionally, facts and evidence predating or following the filing date can be considered to interpret the applicant's intention.

3.         The extent: refusal or cancellation for all or only part of the goods or services is possible.

Assessing bad faith in trademark applications can be complex but CP13 provides a comprehensive framework to guide examiners, applicants, claimants, and representatives through the process. If you have any questions about the presence of bad faith in a trademark application, feel free to ask.

Author: Ellen Gevers

Bio: Ellen is a trademark attorney and managing partner at Knijff, and a welcome speaker and writer in the world of IP. Ellen has spoken at conferences organized by ECTA, INTA, MARQUES and BMM, and her articles are published in the BMM and INTA Bulletin. Ellen is involved as a teacher and board member in the educational program for Benelux Trademark and Design Attorneys (BMM) and paralegals. Next to that, Ellen is involved in the weekly publication of the INTA Bulletin. It’s safe to say Ellen knows what she’s talking about.