On March 30, 2022, UKIPO’s Designee issued a decision emphasizing that “bad faith” cannot be presumed by UKIPO in trademark applications unless relied upon in an opposition action or in nullity by a third party concerned. In the most simplistic terms, “bad faith” can be defined as when an individual or company acts dishonestly and engages in behavior that does not conform to normally acceptable business standards. It is however a rather broad concept, where all the factors of importance relevant to the case will be taken into account.
The ruling considered an appeal after it was alleged that a candidate’s celebrity football player nominations were in “bad faith”. The designated person referred the case to UKIPO; considering that it was not for the UKIPO to presume bad faith and, since bad faith had not been invoked by a third party concerned during opposition or invalidity proceedings, the Registrar would have rather had to go to court.
Global Trademark Services Ltd (the ‘Applicant’) applied for the registration of trade marks representing the names of famous footballers imposed on crests imitating the clubs where they had played. These included the names of Thierry Henry, John Clark, Willie Wallace and Ronaldinho.
Henry is a former French international player famous for his time as captain of Arsenal and “that” handball against Ireland in 2009. Ronaldinho remains one of the most famous players of all time for his career in the Brazilian national team and Barcelona, and as one of the best freestyle footballers to ever play the game. He’s also starred in some fantastic Nike commercials (we especially like the airport one, the crossbar challenge and his child skills). Clark and Wallace both played for Celtic and won the European Cup (also known as the UEFA Champions League) in 1967. Ask any Celtic fan and they’ll tell you that Clark and Wallace are as famous as Henry and Ronaldinho.
The markings not only mimic the crests of the players’ former clubs, but in the case of Henry and Ronaldinho, they also style distinctive silhouettes associated with the players.
A UKIPO Hearing Officer confirmed an earlier series of ‘bad faith’ objections by the Registrar to the Henry and Ronaldinho Requests (the ‘Requests’). The Hearing Officer found that the Claimant could not register the marks without the consent of Henry and Ronaldinho themselves and, given the lack of explanation of the claims, he “owed the Registry a plausible explanation for [the] application to rebut the presumptionfor having acted in bad faith.
The Hearing Officer accepted the claimant’s argument that there is no right of publicity or personality, or the right to protect a person’s image or likeness in the UK, but rather disputed the risk that it would be wrong to register the marks for fear of “serious risk of bringing the trademark registration mechanism into disrepute”. Instead, the plaintiff’s submissions, including the fact that he had already filed numerous similar marks, indicated that he was acting in “bad faith” and that the claims were not genuine.
The plaintiff appealed under section 76 of the Trade Marks Act 1994, arguing that the Registrar’s objections were flawed, and then sought amendments to the class specification to restrict the claims.
At the Named Person hearing, Hobbs QC asked the Registrar to submit to him that his decision was 1) consistent with the Applicant’s right to an independent and impartial tribunal and 2) consistent with the principles set out in Sky Ltd v SkyKick UK Ltd which understands, among other things, that when a court finds objective circumstances that raise a rebuttable presumption of lack of good faith, it is up to the plaintiff to provide plausible explanations in support of his claim. Hobbs QC found that on both counts the earlier rulings were wrong.
Hobbs QC criticized previous approaches by the Hearing Officer and Registrar that they considered bad faith when this was not raised in any opposition to the applications. He cited Section 47(4) of the Act, which requires the Registrar to apply to the court for a declaration of invalidity of a registration and pointed out that “the court clerk is not authorized to assess the merits of the bad faith objection that he himself has raised: he is required to refer the matter to the court”. Hobbs QC summarized that any natural or legal person can raise objections on the basis of bad faith, and that an opponent need not be the owner of an identical or similar mark. However, assuming bad faith, the Registrar had effectively become an adversary of the Applicant and had acted outside his powers.
At a high level, the decision also provides a very useful summary of key case law in this area; covering Trump International Ltd v DTTM Operations LLC, Moreira v EUIPO (NEYMAR) EU, and Sky Ltd v SkyKick UK Ltd – these relate respectively to the extent of vigilance and investigation required by the Registrar, the ability to presume bad faith based on the behavior of an applicant and the key legal principles when considering bad faith in trademark applications.
In short, the decision suggests that bad faith cannot be presumed by UKIPO in trade mark oppositions and invalidity actions where it has not been raised by the parties during the opposition proceedings.
The case has been returned to UKIPO for reconsideration and we eagerly await developments.