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Bad faith in trademark law, what does it mean?

Since 1 July 2021, there are clearer regulation on registration of trademarks when the applicant acts in bad faith. The regulation should make it even more difficult to apply for a trademark for applicants with dishonest intentions.

Bad faith can mean that you have applied for registration of a trademark you are not entitled to but also much else, for example that you have applied without the purpose of actually using the trademark but to block someone else.

The provision on bad faith intends to make it more difficult for the applicant to have a trademark registered when the applicant had a dishonest intention with his application, that the applicant acted in bad faith.

What is bad faith?

The fact that an application was made in bad faith means that the applicant had a dishonest state of mind or intention with his application and thus departed from accepted principles of ethics and honest business practices. With the new regulation, there is no longer any restriction on the situations in which the provision on bad faith may apply, but it is the applicant's intention that is decisive.

In the case law of the European Court of Justice, the concept of bad faith has been divided into two main branches: cases where the intention is to misappropriate the right/s of third parties in some way and cases where the intention is to abuse the legal system.

In cases where there ismisappropriation of the right/s of third parties’, applications may include intent to prevent third parties from selling and marketing their goods, or intent of benefiting from a reputation that a third party has built up.

The NEYMAR case

An example when an application was deemed to have been made with the intention of harming the interests of third parties is the registration application of the EU trademark - NEYMAR for the goods "Clothing, footwear, headgear".

The football player Neymar applied for cancellation of the registration. He stated that the trademark application had been made in bad faith as the applicant knew that Neymar was a well-known football player and the purpose of the application was to take advantage of the reputation built around the name.

The evidence in the case showed that Neymar was known in the football world at the time of the application. The applicant had previously stated that he was familiar with the world of football at the same time and it was therefore unlikely that he would not have known about Neymar's status. The fact that he must have known of Neymar's existence and nevertheless applied for registration for a mark identical to his name was not considered to have been a coincidence but instead a deliberate move. The applicant could not have had any other purpose than to take advantage of Neymar's reputation, nor did he succeed in proving any other purpose.

To abuse the legal system

Abuse of law means that the applicant's intention with the application was to circumvent the purpose behind the trademark law, without necessarily harming third parties directly. An example of a situation where there may be a question of abuse of law is so-called re-filings.

 When a trademark is registered, the applicant has 5 years to start using the trademark, after which others can request that the trademark be revoked.

If the holder of an existing trademark registration submits a new application for the same trademark after five years even though the trademark has not been used, only as a blocking function in order not to lose the protection of the mark, it may constitute bad faith after the amendment.

Learn more about Bad Faith in the trademark law and what it means in practical terms by register for PRV's free seminar on 2 September (the seminar is in Swedish):

Register here

If you believe that a trademark should not have been registered, you can object to the registration. Objections can be made within three months of registration, after which you can apply for revocation.

Opposition to a registration of trademarks

Revocation of trademark registration - PRV