In terms of industrial property, it is increasingly common to find cases in which a brand of products or services that has achieved a certain recognition in the market is reproduced almost in its entirety by competitors who try to take advantage of its reputation.
This legal concept known as “bad faith†is recognized in legislation, but its definition and scope has had to be outlined by the increasingly abundant jurisprudence.
For this reason, the different industrial property offices have joined forces and that is why the European Union Intellectual Property Network has just published the COMMON COMMUNICATION ON TRADEMARK APPLICATIONS SUBMITTED IN BAD FAITH, which includes the requirements that the offices must take. into consideration to declare the existence of bad faith in the owner of a trademark already registered at the time of submitting its application.
And it is precisely in this subjective nature of this legal concept that the greatest complexity lies in appreciating the existence of a disloyal intention or other “sinister” or dishonest motive, which will normally be established by reference to relevant, coherent and objective criteria.
Without prejudice to the fact that each case must be analyzed independently, bad faith is considered to exist if any of these circumstances occur:
- a) misappropriation of the rights of third parties;
- b) abuse of the trademark system: when the applicant has requested the contested trademark for purposes other than those that correspond to the essential functions of the trademark.
In the latter case, trademark applications filed in order to avoid the presentation of evidence of use of previous trademarks (which are required five years from the registration of the trademark) are of special interest.
Noelia Gutierrez
Lawyer
