14 October 2015Trademarks

AIPPI 2015: Unilever reveals mixed results in ‘bad faith’ fight

Unilever has revealed it has had mixed success in two court cases relating to bad faith registration of its trademarks.

Speaking at the 2015 AIPPI World Congress, currently taking place in Rio de Janeiro, Mariangela Sampaio, a legal manager at the multinational company’s Brazil branch, gave two examples, one from Korea and one from China, of court cases it has been involved in.

The congress’s afternoon session on Tuesday, October 13, focused on bad faith registration, also known in some jurisdictions as ‘trademark squatting’.

Sampaio said a Chinese company, which she did not name, had registered a trademark for ‘Knorr’ covering aluminium foil.

Unilever owns a trademark for ‘Knorr’ (covering seasoning for food) in several jurisdictions, including China, and sued the company for bad faith registration. Sampaio did not reveal details of when the case was filed.

“Unfortunately, Unilever lost the case,” said Sampaio. “The court rejected the lawsuit in the first instance due to the trademarks covering dissimilar goods.

“The court’s view was that the two marks could co-exist and that the Chinese mark would be unlikely to confuse consumers,” she said, adding that the company was debating whether to appeal against the ruling.

However, another case, this time in Korea, yielded success.

A Korean company had registered a trademark for ‘Bango’, a soy-sauce-like product made by Unilever that is used to accompany food and is popular in Indonesia.

“Unilever does not use the mark in Korea but we managed to win this case and were able to prove that the applicant was looking to free ride on the existing use of the mark,” she added.

Danny Awdeh, partner at law firm Finnegan Henderson Farabow Garrett & Dunner, then spoke about the recent cease-and-desist letter sent by US presidential hopeful and businessman Donald Trump to a website.

Awdeh said in the US bad faith is “slightly different” in that it occurs when an applicant intentionally uses a registered trademark in order to profit from it, rather than trying to pre-empt a trademark’s success.

The website sells T-shirts with phrases such as ‘Donald Dumb’, ‘Stop Trump’ and ‘America is already great’, a reference to Trump’s campaign slogan ‘make America great again’.

Trump’s cease-and-desist letter claimed that the domain represented a “deliberate attempt” to sell T-shirts online using the ‘Trump’ and ‘Donald Trump’ brands, for which he owns US trademarks, “without any authorisation”.

“I’ll let you decide whether this is ‘bad faith’, Awdeh said of the Donald Trump case, adding that, at the time of the presentation, the website was still active.

The 2015 AIPPI World Congress, which has been taking place at the Windsor Barra Hotel and Congressos in Rio de Janeiro since October 10, closes today, October 14.

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