Trade marks: Bad faith applications

In HOTPICKS Trade Mark, the English High Court discusses bad faith trade mark applications and when such applications will be considered to be invalid.

The Trade Marks Act 2002 contains a number of absolute grounds for not allowing the registration of a trade mark. One of these absolute grounds is that found at sub-section 17(1)(b)(iii) of the Act, Which states that:

(1) The Commissioner must not do any of the following things:

(a) . . .

(b) register a trade mark or part of a trade mark if

. . .

(iii) the application for the registration of the trade mark is made in bad faith.

But what sort of conduct or motivation is captured by the words "bad faith"? The recent English case, Hotpicks Trade Mark [2004] R.P.C. 42 gives some guidance in this area and also provides some significant persuasive reasoning as to the time that the applicant must possess the disqualifying bad faith.

These matters are important: if a party can establish that a trade mark has been applied for in bad faith, he or she may be able to persuade the Commissioner or the Court to declare that the relevant trade mark registration is invalid and as not being able to be registered under Part 2 of the Act.

In the HOTPICKS case, Inter Lotto was counterclaiming in trade mark infringement proceedings that the National Lottery Commission's registration for the trade mark HOTPICKS in relation to lottery services was invalid.

This involved Inter Lotto asserting that the bad faith arose at a date after the application for the mark was made but before the National Lottery Commission application had proceeded to registration.

In these circumstances, Inter Lotto's application failed because the Judge held as a matter of law (after considering the relevant legislation and European Directives/Regulations in detail) that it was not open to Inter Lotto to rely on an objection based on an allegation of bad faith by reference to any date later than the date the National Lottery commission filed its application for the relevant mark. Accordingly, permission for the proposed amendment was refused.

The case is interesting to us here in New Zealand as the bad faith provisions are similarly worded and it is to be expected that a New Zealand Court would reach the same result if it was faced with a similar case.

Enquiries and information

For more information on trade mark law, please email or call Garry Williams on 64 9 916 8661.