Invalidity of a trademark filed in bad faith

The EUIPO Board of Appeal has recently clarified, in the course of proceedings No. T-273/19, certain aspects related to the filing of a trademark in bad faith.

The need for such clarification rose in the face of the action for invalidity proposed in 2015 by a company against a European Union trademark filed and registered by another competing company, according to the first, in bad faith.

The application for invalidity was initially rejected by the EUIPO Cancellation Division, and even the appeal was subsequently rejected, since there was no evidence of bad faith when the application for registration of the contested trademark was submitted.

The Board of Appeal considered that, in order to prove the “bad faith”, it was necessary to prove that the depositor was aware of the prior use of the sign for the goods/services claimed by the applicant and that the use of the sign was unrelated to the typical function of the trademark, namely to identify the entrepreneurial origin of the goods/services claimed.

Such decision was again contested in Case T-273/19, arguing that the concept of “bad faith” should be intended in the context of the regulation of intellectual property and not in the common sense.

The purpose of trademark rules is to contribute to a competitive system in which each company must be able to register signs as trademarks enabling the consumer to distinguish without likelihood confusion his own goods and/or services from those of different origins.

On the basis of this assumption, the grounds for the absolute nullity of the “bad faith” will be identified whenever it appears that the proprietor of the trade mark has submitted the application for registration not with the aim of fully participating in the competition, but with the intention of unfairly prejudicing the interests of third parties or with the intention of obtaining, without aiming at a particular third party, an exclusive right for purposes other than those falling within the function of a trademark, which is the identification of the commercial origin of a given product/service.

Therefore, in order to prove the “bad faith”, it is not necessary for the proprietor of the contested trademark to have sought to prejudice a third party in particular.

The absence of evidence as to whether the applicant has prior use of the sign in question, actual or presumed, cannot lead to the rejection of the application for invalidity, since that evidence appears as only one of the many potentially relevant factors to be taken into account, of which, moreover, it is not possible to identify a mandatory list.