Statutory guidance

PAN 1/23: Practice for raising bad faith objections at examination stage

Published 3 April 2023

Practice for raising bad faith objections at examination stage

1. What?

This PAN revises and clarifies IPO practice for the examination of trade marks under section 3(6) of the Trade Marks Act 1994 (“the Act”), bad faith.

2. Why?

We have revised our practice in light of the comments made by the Appointed Person in the HENRY/RONALDINHO decision (BL O/264/22).

3. Previous published practice

Our previous practice published at paragraph 5.11 of the Examination Guide, part of the Manual of Trade Mark practice, together with the practice outlined in the alphabetical list within that guide headed “Section 3(6) – Bad Faith”, is rescinded.

4. New practice

Paragraph 5.11 is replaced with the following practice:

5.11 Section 3(6)

Section 3(6) of the Act prohibits the registration of a trade mark “…if or to the extent that the application is made in bad faith”.

Notwithstanding that the Registrar has the power under section 47(4) of the Act to launch court proceedings to seek the invalidation of a registered mark where it considers there to have been bad faith in the registration of a mark, this does not preclude section 3(6) from being considered as part of the examination of a new trade mark application. Section 37 of the Act requires the Registrar to conduct an examination of a mark to ensure that it satisfies the requirements of the Act, requirements of which include section 3(6). Mr Justice Carr gave guidance in Trump International Limited v DTTM Operations LLC [2019] EWHC 769 (Ch) about the approach the IPO should adopt when dealing with similar applications to the bad faith conduct dealt with in that case, making no suggestion that the Registrar could not follow that approach during the examination of an application.

Applications for trade marks are presumed to have been made in good faith. However, if an examiner, whilst conducting their research as part of the examination process, identifies certain facts which clearly appear to rebut that presumption of good faith, an objection under section 3(6) will be raised.

It is not possible to define all of the facts and circumstances that might give rise to such an objection. In Skykick UK Ltd and Another V Sky Ltd and Others [2021] EWCA Civ 1121, Floyd LJ identified a number of factors that were pertinent to establishing bad faith including an explanation at point 4 in paragraph 67 that:

The concept of bad faith, so understood, relates to a subjective motivation on the part of the trade mark applicant, namely a dishonest intention or other sinister motive. It involves conduct which departs from accepted standards of ethical behaviour or honest commercial and business practices

In most cases facts and information sufficient to rebut the presumption of good faith are unlikely to be identified through the Internet searches conducted when examining an application. For this reason, the IPO does not expect section 3(6) objections to be raised often at examination stage. That said, if clear facts and information are found (whether from the Internet or elsewhere) from which it is reasonable to conclude that the trade mark applicant must have had some form of dishonest or sinister motivation for filing the application, such facts and information will be presented to the applicant. This will be provided as part of the examination report together with an explanation as to why this has led the examiner to believe that the application was made in bad faith. The applicant will then be given an opportunity to provide a plausible good faith explanation for filing the trade mark, which will be duly considered.

Some non-exhaustive examples of facts and information sufficient to rebut the presumption of good faith would include:

• information sufficient to demonstrate that an applicant is engaged in trade mark squatting, acquiring trade marks not to use themselves but to sell back, or licence, to the legitimate brand owners

• information sufficient to demonstrate that an applicant is filing trade marks not for their own trade mark use but merely for the purpose of creating conflict/dispute with others

• Information sufficient to demonstrate that an applicant is intentionally seeking to mislead the public, obtaining the trade mark as an instrument of fraud

In all the examples given above, the mere fact that a trade mark may comprise or contain the name of a famous person (or indeed a famous or well-known business) may not in itself be sufficient to rebut the presumption of good faith, but that fact may form part of the overall assessment of the likely motivation of an applicant.

The IPO is aware that the decision of the Court of Appeal in the Skykick case referred to above has been appealed to the Supreme Court. This practice will be updated to the extent required following the Supreme Court’s judgment.

5. Timing

This practice will be adopted with immediate effect.