Can I rely on Section 3(6) of the Trade Marks Act, 1994?

Section 3(6) of the Trade Marks Act 1994, is an enforceable total refusal ground for opposing or invalidating a trade mark application or registration at the United Kingdom Intellectual Property Office (UKIPO). The Trade Marks Act, states:

“(6) A trade mark shall not be registered if or to the extent that the application is made in bad faith.”

The purpose of Section 3(6) is to stop the misuse of a registered trade mark, where a third party attempts to register a mark with dishonest intentions or for purposes inconsistent with the principles of trade mark law.

What is determined to be “bad faith” is not explicitly defined in the Trade Marks Act, but instead it has been interpreted through case law. The threshold for relying on bad faith is high. It can arise in a variety of instances such as where an applicant has no intention of using a trade mark for the goods and services specified i.e. the applicant files an overly broad trade mark specification with falls foul of honest intention (Sky v Skykick case), or where the application has been made purely to block a competitor unfairly or to exploit the reputation of a third party mark. The assessment of bad faith involves an objective evaluation of the applicant’s intentions at the time of filing the application, taking into account all relevant circumstances. The difficulty in pursuing a bad faith claim is demonstrating that the applicant’s conduct has departed from accepted principles of ethical behaviour and honest commercial practices. Just because a third party has filed a trade mark which is identical or similar to you brand, does not mean it has been done in bad faith. Knowledge is a key component of succeeding on a bad faith claim. The Court of Justice in Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH established that bad faith can be inferred where there is ‘objective, relevant and consistent indicia’ of an intention to undermine third parties’ interests or to obtain exclusive rights for purposes inconsistent with the functions of a trade mark. However it is important to remember that the mere absence of economic activity corresponding to the goods or services at the time of filing is insufficient to establish bad faith.

If you believe someone has filed a trade mark in bad faith, please reach out to one of our specialised intellectual property lawyers at Briffa.