UK trade mark applications and bad faith
On 30 March 2022, the UKIPO’s Appointed Person reached a decision highlighting that ‘bad faith’ cannot be presumed by the UKIPO in trade mark applications unless it is raised during an opposition or invalidity action by a concerned third party. In the most simplistic terms, ‘bad faith’ can be defined as when an individual or company acts with dishonesty and a behaviour which falls below normally acceptable commercial standards. It is a fairly broad concept though, where all factors of significance relevant to the case will be taken into account.
The decision considered an appeal after it was presumed that an Applicant’s celebrity football player applications were in ‘bad faith’. The Appointed Person referred the matter back to the UKIPO; holding that it was not for the UKIPO to presume bad faith, and, given that bad faith had not been raised by a concerned third party during opposition or invalidity proceedings, the Registrar should have instead raised the matter with the court.
Global Trademark Services Ltd (the “Applicant”) applied to register trade marks depicting famous footballer names imposed on crests imitating the clubs where they had played. These included the names of Thierry Henry, John Clark, Willie Wallace and Ronaldinho.
Henry is a former French international player famous for his time as captain of Arsenal and ‘that’ handball against Ireland in 2009. Ronaldinho remains one of the most famous players of all time for his career in the Brazilian national team and Barcelona, and as one of the best freestyle footballers to ever play the game. He also starred in some fantastic Nike adverts (we are particularly fond of the one at the Airport, the cross-bar challenge and his skills as a child). Clark and Wallace both played at Celtic and famously won the European Cup (also known as the UEFA Champions League) in 1967. Ask any Celtic fan and they will say that Clark and Wallace are as famous as both Henry and Ronaldinho.
The marks not only mimic the crests of the players’ former clubs, but in the case of Henry and Ronaldinho also stylise distinctive silhouettes associated with the players.
A Hearing Officer at the UKIPO upheld an earlier set of ‘bad faith’ objections by the Registrar in relation to the Henry and Ronaldinho applications (the “Applications”). The Hearing Officer held that the Applicant could not register the marks without the consent of Henry and Ronaldinho themselves and, given the lack of explanation for the Applications, it “owed the registry a plausible explanation for [the] application in order to overcome the presumption” of having acted in bad faith.
The Hearing Officer accepted the Applicant’s argument that there is no right to publicity or personality, or right to protect a person’s image or likeness in the UK, but instead took issue with the risk that it would be wrong to register the marks for fear of “serious risk of the mechanism of trade mark registration being brough into disrepute”. Instead, the Applicant’s submissions, including that it had already filed many similar marks, was an indication that it was acting in ‘bad faith’ and the Applications were not genuine.
The Applicant appealed under section 76 of the Trade Marks Act 1994, arguing that the Registrar’s objections were flawed, and subsequently requested amendments to the specification of classes to narrow the applications.
At the Appointed Person hearing, Hobbs QC asked for submissions from the Registrar that its decision was 1) compatible with the Applicant’s right to an independent and impartial tribunal and 2) consistent with the principles in Sky Ltd v SkyKick UK Ltd which includes, among others, that where a court finds objective circumstances which raise a rebuttable presumption of a lack of good faith, it is for the applicant to provide plausible explanations behind the application. Hobbs QC found that on both these points, the earlier decisions were flawed.
Hobbs QC criticised the Hearing Officer and Registrar’s earlier approaches, namely that they considered bad faith when this was not raised in any opposition to the Applications. He cited section 47(4) of the Act, which requires the Registrar to apply to the court for a declaration of invalidity of a registration and highlighted that “the Registrar is not permitted to determine whether the bad faith filing objection which he himself has raised is well-founded: he is required to bring the matter before the court”. Hobbs QC summarised that any natural or legal person can raise objections on the basis of bad faith, and there is no requirement for an objector to be the owner of an identical or similar mark. However, by assuming bad faith, the Registrar had effectively become an adversary of the Applicant and had acted outside of its powers.
At a high level, the ruling also provides a very helpful summary of key caselaw in this area; covering Trump International Ltd v DTTM Operations LLC, Moreira v EUIPO (NEYMAR) EU, and Sky Ltd v SkyKick UK Ltd – these respectively deal with the scope of vigilance and investigation required by the Registrar, the ability to presume bad faith based on an applicant’s behaviour, and key legal principles when examining bad faith in trade mark applications.
In short, the decision suggests that bad faith cannot be presumed by the UKIPO during the examination phase, or otherwise, where it has not been raised in an opposition or invalidity action.
The matter has been passed back to the UKIPO for re-examination and we are eagerly awaiting developments.