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Trade mark applications in bad faith

Print publication

21/07/2016

One of the defining moments of the 2012 London Olympics was its opening ceremony. At centre stage of the ceremony was the display by 965 drummers known collectively as the ‘Pandemonium Drummers’. Soon afterwards, the Pandemonium Drummers Association was established consisting of the Olympic performers.

On 3 August 2013, one member of the Association, Andrew Johnston, took it upon himself to register PANDEMONIUM DRUMMERS as a UK trade mark in class 41.  This was despite Mr Johnston having been suspended from the group along with the removal of all his responsibilities on 29 July.  The reason for his suspension was his attempt to register “Pandemonium Drummers Limited” as a company without the Association’s authority.  Mr Johnston then opposed an application for registration of an EU trade mark brought by the Association.

The Association’s opposition to Mr Johnston’s application for registration, and the subsequent focus of the hearing officer’s considerations, was section 3(6) of the Trade Marks Act 1994: “A trade mark shall not be registered if or to the extent that the application is made in bad faith.”  The hearing officer considered, in particular, where the divide between legitimate self interest and bad faith should be drawn.

In reaching his decision on bad faith the hearing officer drew heavily on the comments of Arnold J in Red Bull GmbH v Sun Mark [1] in which the judge set out eight principles concerning the assessment of bad faith:

  • the relevant date for assessing whether an assessment has been made in bad faith is the application date
  • however, later evidence is relevant if it casts light backwards on the position as at the application date
  • a person is presumed to have acted in good faith unless the contrary is proved
  • bad faith includes not only dishonesty but also “some dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area being examined”
  • the purpose of the bad faith legislation is to prevent abuse of the trade mark system
  • the tribunal must make an overall assessment, taking into account all relevant factors
  • the tribunal must first ascertain what the defendant knew about the matters in question and then decide whether, in the light of that, the defendant’s conduct is dishonest (or falls short of the standards of acceptable commercial behaviour) judged by the ordinary standards of honest people
  • consideration must be given to the applicant’s intention.

The hearing officer found that Mr Johnston had acted in bad faith. As Mr Johnston knew he had no authority to make the application, he was making an application with an improper intention. Emphasis was put on Mr Johnston’s opposition to the Association’s EU trade mark application, as such actions demonstrated his dishonest desire to cause disruption to the Association’s activities.  As a result, the hearing officer found in favour of the Association.

As well as offering a useful illustration of the application of section 3(6), the case is a reminder of the need for organisations to be proactive in taking steps to ensure their intellectual property is protected as early as possible.  If Pandemonium had applied for its own trade mark registration earlier, then it could have avoided the unpleasantness of contesting Mr Johnston’s application.

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[1] [2012] EWHC 1929 (Ch)

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