Undoubtedly, the interpretation of "bad faith" may vary across individuals, particularly within the same firm. The numerous instances involving the question of “bad faith” regarding national and EU trademarks serve as an example of the wide variety of “bad faith” scenarios that can occur in trademark law and how difficult it can be to identify them. When it comes to trademarks, bad faith is a prevalent concept. In actuality, trademark squatting and trademark registration crowding are currently global problems. Applications filed in bad faith to profit off the goodwill and prestige of another person's trademark are unavoidable in circumstances involving the idea of monopoly.
Under EU law, a trademark registration can be cancelled under Article 59(1)(b) (European Union Trademark Regulation, or EUTMR) if it can be proven that the trademark owner acted in "bad faith" when submitting the trademark application. The party requesting a declaration of invalidity must fulfill the burden of proof to make such a claim.
Lately, the European Court and the EUIPO have provided insight into various factors or actions that could be considered bad faith:
Business relationship: In the recent situation involving Koton Magazacilik Tekstil Sanayi ve Ticaret v. EUIPO, using a mark known to the Registered Proprietor because of past business interactions with the Petitioner was found to be done in bad faith. Furthermore, prior official or unofficial interactions between the parties will be taken into account in assessing bad faith.
Intent to exploit the reputation of the original user: Evaluating the applicant's motivations when submitting the application is a well-known factor in deciding if it was done in a dishonest manner. This can be seen in the recent case of HT Media Limited v. Brainlink International Inc., where the Delhi High Court banned the latter from using the domain www.hindustan.com or any similar symbol to "Hindustan" and "Hindustan Times." Brainlink International's deceptive intention was clear because they had not used the domain name since 2000, and their unsuccessful attempt to sell it at a high price to HT Media Limited was a failure.
Well-known trademarks: Famous brands receive the most extensive protection in all categories. It was discovered that in addition to registering trademarks that are confusingly similar for the same products, third parties were also using marks that were confusingly similar to well-known trademarks for different products to exploit the reputation of the original trademark owner. The case of SONY versus ABT SONY is a prime instance where the IPAB noted that careless, uninformed, and rural consumers could easily be misled by the respondent's ABT SONY trademark. The Tribunal determined that the central idea of both marks revolved around SONY, indicating that the Respondents were attempting to unfairly benefit from the famous mark SONY at the expense of the Appellant's reputation, violating fair business practices.
Under Article 4 of the EU Trade Mark Regulation (EUTMR), dishonest trademark applications are not allowed in the European Union. The EUTMR characterizes bad faith as having the intention to unfairly benefit from the unique character or reputation of a previously registered trademark. Also covered are scenarios in which the applicant has no plans to utilize the trademark for the goods or services specified in the application.
The legitimate owner of an already-existing trademark may contest a bad-faith trademark application or registration under EU law. Furthermore, those who file trademark applications in bad faith face legal repercussions in both jurisdictions, such as objection, cancellation, and infringement procedures.
In Sky PLC v. SkyKick International AG, the claimant (collectively referred to as Sky) claimed that the defendants (collectively referred to as "SkyKick") had violated four EU trademarks that belonged to the second claimant, Sky AG, and one UK trade mark that belonged to the first claimant, Sky PLC. The term "SKY" appeared in these trademarks. SkyKick used the trademark "SkyKick" and its derivatives, which gave rise to the allegations of infringement. Concerns about bad faith, the specification's clarity and precision, and the possibility of confusion were raised in this case.
The court decided that although SkyKick was violating trademark laws by using the "SkyKick" symbol, certain of Sky's trademark registrations were void in part because of bad faith. The court further decided that Sky's trademarks were partially invalid due to their excessively wide requirements. The case made clear how crucial it is for trademark criteria to be precise and unambiguous, as well as how important it is to prevent registrations in bad faith.
These are only suggestions of what might be considered “bad faith,” and other instances of “bad faith” behavior might surface as the Court and the EUIPO handle more cases. The interpretation of "bad faith" in trademark law can differ between people and within companies, causing conflicts over trademarks in national and EU jurisdictions. Trademark squatting and registration crowding are prevalent worldwide, with individuals filing applications in order to benefit from someone else's positive reputation. Under EU law, trademarks can be revoked if it is proven that they were registered in bad faith, taking into account factors such as dishonest intentions and business connections. Famous brands are granted strong legal protection, as seen in the Sony vs. Abt Sony case where companies try to benefit unfairly from well-established reputations. Illegal trademark applications, as outlined in the EU Trade Mark Regulation, are prohibited and could result in legal actions such as objections or revocation. In cases like Sky PLC v. SkyKick International AG which illustrate problems with infringement and bad faith resulting in invalid trademark registrations. The case highlighted the need for specific trademark standards to avoid registrations with malicious intent.
