When trade mark applications are made in bad faith

Tom Griffin, Solicitor

Trade marks are designed to protect brands, and there are consequences when the registration system is used for the wrong reasons.

While it is understood that you shouldn’t apply for a trade mark in bad faith, this raises an important question: what exactly does “bad faith” mean?

What does bad faith mean in trade mark law?

To answer that question, however, it is necessary to first consider the objectives of trade mark law.

Trade mark law ensures undistorted competition by allowing businesses and individuals to register signs which enable consumers to distinguish their goods or services from those others. This not only helps identify the origin of products and services but further reduces the risk of confusion in the marketplace.

It follows that bad faith will be established where an application has been made not with the aim of engaging fairly in competition, but either with the intention of:

1. undermining, in a manner inconsistent with honest practices, the interests of third parties; or
2. obtaining, without even targeting a specific third party, an exclusionary right for purposes other than those falling with the functions of a trade mark.

Who must prove bad faith?

The burden of proving that an application was made in bad faith lies on the party making the allegation. However, where that presumption of good faith is rebutted, it is for the applicant to provide a plausible explanation of the objectives and commercial logic pursued by the application.

How has the UK IPO apply the test in practice?

The recent UK IPO decision in the dispute between GymShark and GymBull (O/0469/26) is a timely reminder for brand owners to consider the ground of bad faith when opposing a trade mark application or seeking to invalidate a registration.

In that matter, GymBull had engaged in a pattern of applying for trade marks that closely resembled famous marks, such that the presumption of good faith was rebutted. GymBull failed to put forward a plausible, commercial explanation in response and, as a result, the application was refused in its entirety.

If you have any queries relating to trade mark matters, please contact a member of our intellectual property department on 0161 832 3434, or at [email protected].