After spending many months and years to build up and establish your fashion brand, label, and products it is extremely important to protect your intellectual property from ‘bad faith’ trademark claims. Many fashion brands are not aware that others have or are about to file ‘bad faith’ trademark applications to damage their chances of success.
Unfortunately, it is all too common in the field of fashion and design to see attempts to register trademarks that seek to take unfair advantage of established brands. Given the high value and strong reputation of some British fashion brands, ‘bad faith’ trademarks can represent a serious threat to their commercial interests. In UK law, some protection is available against the registering of bad faith trademarks. Under the Trade Marks Act 1989 (TMA 1989), a trademark application can be refused if it can be shown it was made in ‘bad faith’. Furthermore, where a trademark
has already been registered, this can be invalidated if it can be shown that it was applied for in ‘bad faith’.
What is meant by a ‘bad faith’ trademark?
UK law does not explicitly define what is meant by bad faith in the context of trademark
applications, however, its meaning has been developed through case law. A trademark application can be refused under the TMA 1989 on the grounds of ‘bad faith’ if it can be shown that:
- the applicant has no intention to use the mark as a trademark, or;
- where the trademark application is intended to spoil or prevent another party from registering the mark
When deciding on a trademark case, one of the key questions the courts will often seek to answer is whether the alleged conduct fell below the ‘proper standards of commercial behaviour’ expected’.
What is meant by ‘proper standards of commercial behaviour’?
‘Proper standards of commercial behaviour’ refers to actions that a reasonable and experienced person in a specific area of commerce may take. In the context of fashion, where a trademark application is made, perhaps for a logo or unique design, they would be expected to make further enquiries if they are aware of a potential conflict relating to the trademark application.
An example of this might be a person or company taking advantage of ‘first to file’ trademarks systems to block a legitimate owner from filing their trademark.
If you have a fashion brand in the UK, it is essential to act fast if you have a reason to believe that another party has filed a trademark application in ‘bad faith’, which may harm your commercial interests. A commercial IP law Solicitor
will be able to intervene on your behalf to ensure the application is rejected, or if already approved, revoked.
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