If a competitor files a trade mark for a name you have been using, can you stop them even if you don’t actually have the trade mark yourself? A recent decision of the General Court affirms that you can.
If a trade mark is registered in bad faith, it can be rendered invalid. Bad faith occurs when there is a dishonest intention to exploit a trade mark, for example if the intention when filing is to block others from using the mark rather than to actually use it. Ultimately, the question as to whether a mark is filed in bad faith will turn on the specific facts of each case.
The offending mark, ‘AGATE’, was filed by UNIVERS. Shandong owns a Chinese figurative mark including the word element ‘Agate’ and had operated in the past using this mark in Bulgaria. The offending mark was registered for Class 12 (tyres), and Shandong had used its Agate mark for tyres as well.
The General Court found that UNIVERS had filed AGATE in bad faith.
Key to the court’s findings of bad faith were the following factors:
This judgment concerning bad faith is helpful for brand owners because it illustrates that you can successfully intervene even when:
The key takeaway of the story is … don’t be discouraged from taking action. Courts don’t like it when people abuse the trade mark system to distort competition and this judgment is an example of this.
Written by Laura Gathercole, Paralegal
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