Bad Faith Filing: A tool to deprive the Righteous of their Rights.
“Bad faith filings” refer to such applications for trademark registration wherein the applicant’s mark is identical or similar to the mark of a third party, especially renowned-brand owners, in order to take advantage of the fact that the genuine trademark user has not registered the same.
An alliance against the common plight: TM5
TM5 is an international organization of five domestic trademark offices, i.e., the Japan Patent Office (JPO), the Office for Harmonization in the Internal Market (OHIM), the United States Patent and Trademark Office (USPTO), State Administration for Industry and Commerce of the People’s Republic of China (SAIC) and the Korean Intellectual Property Office (KIPO). The group of five has strived towards building a common consensus on the policy-making and administering trademark regimes concerning the member states’ respective jurisdictions.
TM5 has driven a project titled as “Continuation/Expansion of Bad Faith”, objective being information exchange on the said subject and propagating user awareness on ways they can respond to bad-faith trademark filings. In pursuance of this, TM5 has held seminars since 2010 wherein information on operational practices at each member state’s trademark office was shared internally. Seminar held in Tokyo (2013) was dedicated to a comparative analysis of member states’ domestic laws and practices whereas, the Hong Kong meet (2014) focused on legal systems and practices for bad-faith trademark filings by TM5 partner offices.
Excerpts from the Report on “Laws and Examination Guidelines/Practices of the TM5 Offices against Bad-Faith Trademark Filings”
Defining “Bad Faith”
In the report, it was concluded that none of the TM5 offices have adopted a definition for the term “bad faith”. Nevertheless, the important factors determining bad faith at each of the TM5 offices are common: -a) extent that trademarks are considered to be well-known;b) an intention of an unfair purpose; c) existence of a relationship between applicants and other persons. It was also concluded that these factors are not exhaustive for the purpose of determination of bad faith. It implies that while assessing bad faith in actual cases, any bad-faith filing should be determined with full consideration given to all relevant factors and circumstances pertaining to individual cases.
Stages of Adjudication on “Bad faith”
JPO and KIPO– Examination of “bad faith” can be conducted even at the ex-officio examination stage i.e., the first stage after the filing of an application. Further, “bad faith” can be ascertained after Oppositions are received as well as during the trial for validation/ invalidation.
SAIC and USPTO– A plea of “bad faith” is allowed at the trademark opposition stage. The ground of “bad faith” can also be raised in the trial for invalidation after registration of the mark.
OHIM– “Bad faith” is allowed to be requested only after the trademark has been registered i.e., in an invalidity/cancellation action or counter-claim in national infringement proceedings.
The Common Principles of Adjudication
Establishment of “bad faith” directly relies on the establishment of “ill-intent” in the mind of the applicant. Undisputedly, the issue is a subjective one in toto. Therefore, a judgement on bad faith is pronounced after thorough scrutiny of the facts and the circumstantial evidence in each case. Under all the five jurisdictions, the burden of proof lies on the person pleading bad faith. Moreover, a likelihood of confusion among the rival marks is no proof of bad faith on the part of the applicant.
Conclusion
An erroneous decision over bad faith filing may cause substantial harm to the business of a genuine mark holder or it may deprive a genuine applicant of the exclusive rights arising out of the registration of the mark. Therefore, it is pre-requisite that patent offices across the globe consensually lay down certain principles which shall guide the examination and adjudicatory processes on “bad faith disputes”. It is still unpredictable what TM5 will come up with in its subsequent meetings. Whether a new disciplined model will be forged out to curb the menace of “bad faith filings” Or will the existing framework hold good enough for resolution of future disputes?