CP13 - A new common practice on trademark applications made in bad faith

The assessment of bad faith in trademark applications can be a difficult matter. The concept of bad faith is not defined, delimited or described in the trademark legislation. Although EU case law provides guidance, there was a risk of the concept being subject to different interpretations. That is why the Intellectual Property Offices of the European Union Intellectual Property Network (EUIPN) have developed the CP13 Common Practice. 

The Common Practice aims to provide a common understanding of the general notion of bad faith and of other concepts, including terminology related to its assessment, as well as factors and scenarios that may prove relevant in the assessment. 

Below are the most important principles of the common practice:

1. Key notions in bad faith cases

First some key notions are defined that appear in bad faith cases. Specifically, the common understandings of the terms ‘applicant’, ‘claimant’, ‘earlier right’, and ‘contested trademark’ are outlined. These notions have been developed with the aim of ensuring a harmonised and consistent application of the principles of the Common Practice and to provide common guidance on how these notions should be understood. 

2. The general notion of bad faith in trademark applications

The document outlines a common understanding of the general notion of bad faith in trademark applications. It expands on the central premise that bad faith presupposes the presence of a subjective motivation on the part of the trademark applicant, namely a dishonest intention. Then a common understanding of the dishonest intention is provided, explaining that it is the cornerstone of the existence of bad faith, and a mandatory factor which must always be examined. Two non-exhaustive facets of bad faith are differentiated: (1) the misappropriation of the right/s of the third party: where the applicant is targeting the interests of a specific third party; and (2) the abuse of the trademark system: where the applicant applied for the contested trademark for purposes other than those falling within the essential functions of a trademark.

3. General rules for the assessment of bad faith in trademark applications

Information is provided here as to the burden of proof in bad faith cases, the relevant point in time for determining whether there was bad faith and who is the applicant in bad faith cases.

4. Common factors for the assessment of bad faith in trademark applications 

The document also comprises a non-exhaustive list of common factors that may be relevant when assessing bad faith, among which only one is mandatory and will always need to be present (i.e. the applicant’s dishonest intention). 

5. Scenarios of bad faith in trademark applications

This section outlines the most typical and relevant scenarios of bad faith (i.e. parasitic behaviour, breach of a fiduciary relationship, defensive registrations, re-filing and filing for speculative purposes). Under each scenario, some examples extracted from case-law are presented to illustrate how the factors that contributed to the finding of bad faith in that real case interplayed.

6. Extent of refusal/cancellation due to bad faith

The document finalises by giving some information about the extent of a refusal or cancellation due to bad faith. In general, bad faith will exist in respect of all the contested goods and/or services for which the contested trademark was applied for or registered. However, a partial refusal/cancellation is also possible.

The Common Practice has been published on 22 March 2024. It will take effect within three months of this date of publication. The entire text of CP13 can be found here.

For more information on Common Practices in general, read our expert article on Common Practices here

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