A recent decision shows that having a genuine intention to use a mark is still an important factor in securing a valid registration in the UK, and that a pattern of behaviour in the UK and elsewhere may be taken into account when assessing whether or not an Applicant has such an intention.
When you file a national UK application (or designate the UK under an International Registration), you are required to confirm that that the Applicant either uses or has a bona fide intention to use the mark for all of the goods/services listed in the application.
It is comparatively rare for a trade mark application to be opposed successfully on the basis that the Applicant had no real intention to use the mark, but it can and does happen.
Paper Stacked Limited successfully opposed a UK application for ALEXANDER on this basis. The Applicant, CKL Holdings NV (“CKL”) appealed against this decision. Geoffrey Hobbs QC, sitting as an Appointed Person, recently issued his decision* rejecting the appeal.
CKL’s UK application for ALEXANDER was originally for a range of goods in Classes 18, 20 and 25, but was opposed by 4 different parties. The other three oppositions were resolved, leaving the application covering only mirrors and picture frames in Class 20.
Paper Stacked had opposed on the basis that the mark lacked distinctiveness – this ground of opposition failed. However, Paper Stacked also alleged that CKL had no bona fide intention to use the mark. They submitted that the application had been filed in “bad faith” and should be refused under the provisions of Section 3 (6) of The Trade Marks Act 1994 (“A trade mark shall not be registered if or to the extent that the application is made in bad faith.”)
Paper Stacked submitted evidence showing that CKL had filed several hundred other trade mark applications in numerous territories – mostly within the EU – the majority of which were for common first names. They argued that that there was “no commercial logic” for CKL’s filing strategy and that the purpose appeared to be to prevent others from using or registering genuine trade marks.
Paper Stacked argued that CKL’s conduct and trade mark filing activity “depart significantly from the accepted principles of ethical behaviour or honest commercial and business practices.”
CKL filed a counterstatement in which it maintained that it had acted lawfully. It specifically contended that “The bona fide intention to make use of the subject mark if and when it achieves registration can, according to UK law, only be evaluated in the course of a revocation action due to non-use after five years of registration.”
The Hearing Office disagreed and refused CKL’s application, and Geoffrey Hobbs QC upheld that decision. He stressed that Section 3 (6) “proceeds upon the premise that the right to apply for registration of a trade mark cannot validly be exercised in bad faith. … The objection is absolute in the sense that it is intended to prevent abusive use of the system for acquiring title to a trade mark by registration.”
The evidence filed by Paper Stacked in support of their opposition included the information that the sole Director of CKL was also the Director of over 1,200 UK companies, some of which were reported to have applied to register marks which are well known in the US or Europe, such as THE HOME DEPOT, ENRON, THE LEARNING CHANNEL and PAN AM. The suggestion was that the opposed application was part of a systematic abuse of the trade mark registration system.
Written observations filed on behalf of the Registrar in response to the appeal also included the information that, as of 30th November 2017, there were 97 live contested trade mark cases before the UK IPO involving companies with the same Director as CKL – this being about 5% of all the live contested trade mark cases before the UK IPO at that time.
Without this pattern of behaviour by the Applicant and related parties the bad faith allegation would probably have failed in this case. However, if you are considering filing a trade mark application in the UK it is important to be aware that you must have a genuine intention to use the mark.
*Decision of 18 December 2017 In the Matter of: The Trade Marks Act 1994 -and- In the matter of: Trade Mark Application No. UK00003146477 by CKL HOLDINGS NV -and- Opposition No. OP000406941 by PAPER STACKED LIMITED.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.