22 May 2017

INTA 2017: Bad-Faith Filings—Exploring the TM5’s Case Studies

Trademark owners have a new weapon against bad-faith trademark filing, according to speakers in the panel session TM5  Workshop Presentation of the Compilation of Case Examples of Bad Faith Trademark Filing.

Led by the Japan Patent Office (JPO), the five trademark offices known collectively as the TM5 have compiled 50 case studies on bad faith from each of the group’s members, the remainder of which are the European Union Intellectual Property Office (EUIPO), Korean Intellectual Property Office (KIPO), China’s State Administration for Industry and Commerce (SAIC), and the U.S. Patent and Trademark Office.

Sunao Sato, Director, Trademark Division, JPO, explained that the main aim of the TM5’s project is to share information on laws, regulations and operational practices from each member regarding bad-faith filings.

The examples are based on actual cases where trademarks that were filed or registered with bad faith were disputed. The TM5 has listed 50 case examples, with ten from each office.

“The cases have been split into the categories of free riding, immoral, and lack of intention to use,” Mr. Sato said, with the majority of the 50 cases concerning free riding.

Karin Kuhl, Director, Operations Department, EUIPO, was on hand to present one of the cases from Europe.

The case involved former boxer Dariusz Michalczewski from Poland, who had registered trademarks for his name in Poland and the European Union covering beverages, including energy drinks.

He worked with a partner company called FoodCare, which produced the energy drinks and was authorized to use his image, his nickname of “Tiger,” and his trademarks.

In 2007, FoodCare applied for T.G.R. ENERGY DRINK covering energy drinks in class 32, and it was registered in 2008.

The boxer filed a cancellation request against the trademark on the grounds of likelihood of confusion and bad faith, but the EUIPO found no likelihood of confusion or bad faith.

Mr. Michalczewski then appealed and the Appeal Board backed him, saying there had been bad faith.

As Ms. Kuhl noted, the Board found it necessary to take into account all the relevant factors in assessing the applicant’s bad faith at the time of filing for registration.

The General Court later confirmed the decision, with one of its reasons being that FoodCare intended to develop commercial activity based on the image and reputation of the boxer.

In Korea, there has been a significant decline in the number of bad-faith cases, as Kijoong Song, Deputy Director Trade Mark Examination Policy Division, KIPO, later explained.

“This achievement is due to strong policy measures to eradicate such bad practices,” he said, adding that in many cases “trolls” register a trademark without any intention to trade but instead to use the mark for claiming licensing fees or damages.

KIPO has cracked down on this behavior by introducing a system to verify intention to use when a reasonable doubt arises and also charging a fee when an excessive number of goods have been designated.

The Office will continue monitoring bad-faith filings, Mr. Song said, particularly as they harm the “national image.”

In China, there are typically five types of bad-faith filings, explained Christopher Shen (NTD Patent & Trademark Agency Ltd., China), who was speaking on behalf of Ouyang Shaohua, Deputy Inspector General of Trade Marks, SAIC. He also passed on a message of thanks from Mr. Shaohua to the JPO for all the “hard work” in compiling the cases.

The five categories include where someone copies, imitates or translates another party’s mark; where a trademark agent/representative registers the trademark of the represented party in the owner’s name; where someone squats the mark; where someone registers a mark that has reached a certain “influence”; and where someone’s personal name is registered.

“I deal with these kinds of cases every day,” said Mr. Shen.

Mr. Shen explained that in China there are generally two channels for dealing with bad-faith filings: opposition (for applied-for marks) and cancellation procedures (for registered marks). Unlike in some other jurisdictions, in China the bad-faith factor is very important in oppositions, so “if you have good evidence, the Trademark Office can reject the application,” removing the need to seek an invalidation.

In the final discussion, this time focusing on the United States, Gerard Rogers, Chief Judge of the Trademark Trial and Appeal Board said that bad faith is a matter of perspective, because one person’s view of the concept might differ from another’s, particularly if it is felt that an infringer’s “heart was in the right place” but they just didn’t have the right documentation.

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