Key takeaways

• Collating evidence and keeping records of commercial decision-making that clearly illustrates your intention at the time of filing can be important to rebut any presumption of bad faith. This is particularly so for repeat filings and where a mark might not be used in the form in which it was registered (including where it might be used as a component part of another mark) or where there are other unusual circumstances.
• Filing a relatively broad specification covering current and anticipated plans and leaving some room for future expansion may well be permissible. Filing for a broad term is generally acceptable if there is an intention to use the mark on a few (and potentially just one) item(s) within that broad term. Filing for goods or services that have no connection with commercial reality can result in those terms being struck out from registrations.
• Re-applying for the same mark periodically with no commercial rationale (e.g., covering the same or substantially the same goods or services as previous applications) is liable to lead to allegations of bad faith by ever-greening.
• Don't assume that you can stop a third party from using or registering a conflicting mark based on bad faith. The deliberate registration of a mark that conflicts with a third party's mark is not generally by itself sufficient for a finding of bad faith; something more is usually required. Filing first remains an important strategy.

In more detail

What is bad faith?

In the UK, a trade mark can be refused registration to the extent that the application is made in bad faith.

• The UKIPO can refuse applications on grounds of bad faith on its own volition.
• Third parties can also oppose or invalidate a trade mark on grounds of bad faith.

In the EU, a trade mark cannot be refused or opposed on grounds of bad faith. Bad faith can only be raised once an EUTM is registered. This is a key difference between UK/EU practice, but the substantive law on bad faith is still largely harmonised between UK and EU.

There is no definition of bad faith in the legislation in either the UK or EU. Bad faith is broadly defined as:

• Presupposing a dishonest intention on the part of the applicant
• When the applicant's conduct falls short of honest standards of acceptable commercial behaviour 

The relevant date for bad faith is the filing date, so the assessment will be made based on the facts as they were on the date of filing of the challenged mark.

Bad faith against third parties

Bad faith falls into two main categories: bad faith against third parties, and bad faith against the trade mark system.

Bad faith against third parties arises where the applicant had the intention, at the time of filing, of undermining the interests of a third party. It can include a number of scenarios such as the following:

• Where an application is filed solely for the purposes of preventing a third party (such as a competitor) from entering the market using the mark or a similar mark.
• Where an application is filed for a mark properly owned by someone with whom the applicant has a business interest.
• Where an application is filed in the context of trade mark squatting, i.e., to prevent the legitimate owner using and registering the brand in one or more jurisdictions.

The finding of bad faith will depend on the factual circumstances, but usually mere knowledge of the third party mark is not sufficient.

Bad faith against the trade mark system

Bad faith against the trade mark system arises where the applicant had the intention, at the time of filing, of obtaining an exclusive right for purposes other than those falling within the approved functions of a trade mark, for example:

• Where the application is filed solely for the purposes of broadening a monopoly (to use as a so-called defensive weapon), including filing for goods or services for the purposes of blocking others from entering the market and without any genuine commercial intention on the part of the mark owner to use the mark on the relevant goods and services.
• Where the application is filed to circumvent the rules on proving genuine use (so-called ever greening).

Filing for a broad term (e.g., computer software, pharmaceuticals or telecommunications services) might not constitute bad faith if the applicant has a genuine intention to use the mark on a small number (potentially just one) item within that broad term. The UK Supreme Court will consider this issue later this year in a long-expected decision.