The UK IPO has issued a new Practice Amendment Notice (1/23) detailing its approach to raising bad faith objections when examining trade mark applications following the decision of Geoffrey Hobbs KC in O/264/22 HENRY / RONALDINHO. This case concerned trade mark applications incorporating the names of the famous footballers, which had initially been refused by the IPO on the basis of bad faith. The decision was overturned on appeal to the Appointed Person.
The IPO’s previous stated practice was that a bad faith objection may be raised where applicants seek to register the name of a famous person in respect of goods and services which are connected with the famous individual.
This practice was heavily critiqued by Geoffrey Hobbs KC, sitting as the Appointed Person, in the aforementioned decision, on the basis that its effect was to create a personality right which is not otherwise recognised by English law.
Geoffrey Hobbs KC was also concerned that the IPO could not act as an independent tribunal in subsequent opposition proceedings if it had itself taken a position during the course of examination on whether the applicant had a fraudulent intention. It was inappropriate for the Examiner to act as ‘investigator-prosecutor-judge-jury-executioner’. The Appointed Person critiqued the practice on the basis that it was ‘legally deficient’ and ‘procedurally unacceptable’ for the IPO to raise the serious accusation of bad faith against a person entitled to the benefit of a rebuttable presumption of innocence.
Somewhat undeterred, the IPO has updated its practice to say that it will continue to raise bad faith objections if it identifies clear facts and information from which it is reasonable to conclude that the trade mark applicant acted in bad faith. Non-exhaustive examples include evidence that the applicant intends:
- solely to sell the application back to legitimate brand owners;
- merely to create conflicts with others; or
- to mislead the public and use the trade mark as an instrument of fraud.
The specific reference to names of famous people has been removed, but this is an expansion of the number of factual scenarios specifically listed in the IPO’s manual, used by Examiners during their review process, in which the IPO is prepared to raise ex officio bad faith objections.
In practice, the IPO has stated that it does not expect bad faith objections to be raised ‘often’, and it seems likely that it will only do so in scenarios where most people would agree that a trade mark applicant’s behaviour falls foul of the bad faith provisions, for example in a clear case of multiple filings by a trade mark ‘troll’. Whether any such decisions would stand on appeal remains to be seen, as does the future of the law on bad faith more generally, given the impending decision of the Supreme Court in the Skykick case.
Social Media cookies collect information about you sharing information from our website via social media tools, or analytics to understand your browsing between social media tools or our Social Media campaigns and our own websites. We do this to optimise the mix of channels to provide you with our content. Details concerning the tools in use are in our Privacy Notice.