Keeping Faith in Pelicans! (or OHIM Cancellation Guidelines: the Pelican case) PTMG - London - Spring 2014

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1 Keeping Faith in Pelicans! (or OHIM Cancellation Guidelines: the Pelican case) PTMG - London - Spring 2014

2 The Savoy, London Did you know: Savoy Court is the only road in the UK where you can drive on the right-hand side. The Savoy boasts a private pier just a few steps from the riverside. Previous guests include Sir Winston Churchill, Frank Sinatra, Christian Dior, Marilyn Monroe, Claude Monet, John Wayne, Katherine Hepburn and Miss Piggy. Kate Hudson and Katy Perry have both been in trouble for smoking in the ballroom. The Savoy Cocktail book was created over 80 years ago and is still regarded as the bible for bartenders.

3 Keeping Faith in Pelicans! The next 40 minutes A. A cross border introduction to re-filing trade marks and bad faith: - OHIM - UK - Germany - France B. Bad faith examples relevant to the pharmaceutical industry C. Bad faith so what!

4 An introduction to bad faith. A very English saying. Don t teach your grandmother to suck eggs! Teaching grandmother to suck eggs is an English saying meaning that a person is giving advice to someone else about a subject that they already know about (and probably more than the first person). "Egg sucking" removed the egg contents while preserving the shell intact. Two small holes were made on the ends of the egg, and the contents sucked out.

5 The OHIM Approach Article 51(1)(b) CTMR: Where the applicant was acting in bad faith when he filed the application for the CTM it is liable to be declared invalid. Bad faith is not defined and it is therefore left to the court to interpret. R 582/ (EAST SIDE MARIO S): Bad faith can be considered to mean dishonesty which would fall short of the standards of acceptable commercial behaviour. Old OHIM Guidelines (Part D, Section 2, paragraph 4.3.3) pre Pelican case: Where a CTM owner makes repeated application for the same mark with the effect of avoiding the consequences of revocation for non-use the proprietor is acting in bad faith.

6 OHIM Guidelines The Guidelines have been drawn up to cover the majority of current cases, and consequently can be regarded only as general instructions. These Guidelines are not, therefore, legislative texts. The parties, and the Office, must where necessary refer to Regulation No 40/94 on the Community trade mark, the Regulation implementing that Regulation, the Regulation on fees and the Regulation for proceedings before the Boards of Appeal and, finally, the interpretation of these texts handed down by the Boards of Appeal and the Court of Justice of the European Communities, including the Court of First Instance of the European Communities.

7 The OHIM Approach Pelicantravel.com v OHIM (T-136/11) Pelikan owned the earlier trade mark: Having failed to use the earlier trade mark, three months before the expiry of 5 year grace period it registered the later trade mark:

8 The OHIM Approach Pelicantravel.com applied to invalidate the later mark on grounds of bad faith arguing Pelikan was simply attempting to get around the 5 year non-use provisions. The General Court agreed that the marks were identical (the differences being insignificant). However, the General Court accepted that the reason for the new application was genuine in that it had decided to modernise the mark to celebrate its 125 th anniversary and consequently decided to file the modernised version as a result. The General Court ruled no bad faith (purpose was modernisation not an attempt to circumvent 5 year rules)

9 OHIM Guidelines Post Pelican OHIM Guidelines (Part D, Section 2, paragraph (3(b)): Where a CTM owner tries to artificially extend the grace period for non-use by filing a repeat application of an earlier CTM, this may be taken into account to assess whether the proprietor acted in bad faith. Possibly relevant factors indicating bad faith: Identity/confusing similarity of signs; Knowledge of use of an identical or confusingly similar sign; Dishonest intention; Artificially extending the grace period for non-use; Existence of invalid national trade mark based on bad faith; and Circumstances under which the contested sign was created.

10 OHIM Guidelines Post Pelican Factors unlikely to indicate bad faith Extending protection of a national mark by registering it as a CTM (falls within normal commercial strategy) Applying for a long list of goods or services which exceed the applicant s current goods and services that it markets The mere fact that the differences between an earlier CTM and repeat application are insignificant as not to be noticeable to the average consumer Fact application is filed less than three months prior to the expiry of an earlier identical CTM alone is not sufficient.

11 The OHIM Approach Decided based on overall assessment of all relevant factors Presumption of good faith until invalidity applicant adduces evidence to the contrary. Very difficult to prove bad faith Burden falls to the party trying to prove bad faith Re-applying for the same mark within the 5 years does not necessarily constitute bad faith Consider reasons on a case by case basis in light of commercially acceptable practices in sector concerned

12 Bad Faith: The UK Approach Section 3(6): A trade mark shall not be registered if or to the extent that the application is made in bad faith. No statutory definition of bad faith. The law is generally the same as before OHIM. Only difference is its interpretation. Combined test (i) a reasonable and honest person would consider the act dishonest (objective); (ii) based on that standard, the Defendant was aware that his act was dishonest. ECJ in Lindt (Chocolate Bunnies) questions this approach

13 Bad Faith: The UK Approach Main difference compared to OHIM: In the UK and Ireland, when applying for the mark you must have a bona fide intention to use the mark. Applications made without a genuine intention to use may constitute bad faith (OXYFRESH (SRIS 0-095/99) and DEMON ALE (SRIS 0-072/99)). This can include applying for a very wide specification of goods and services (Mickey Dees (nightclub) Trade Mark [1998] RPC 359)

14 Bad Faith: The German Approach Section 8 (2) no. 10 of the German Trade Marks Act (GTMA): Excluded from registration are trade marks ( ) which have been applied for in bad faith. Bad faith may include: speculative purposes (applying without real intention to use) without reasonable cause (applying when aware third party has right) misuse the registration in a competitive wars Bad Faith generally does not include: stockpiling

15 Bad Faith: The German Approach Bundesgerichtshof (Federal Supreme Court), Judgment of 3 November 1994, I ZR 71/92 NEUTREX Repeated applications are not unlawful as such. It must be evaluated as to whether the applicant has a legitimate interest in re-filing an application Bundespatentgericht (Federal Patent Court), Decision of 29 April 2010, 25 W (pat) 151/09 Maxitrol Bad Faith present if application is being filed in the expectation that the producer of special pharmaceutical products will need the mark in future.

16 Bad Faith: The French Approach mauvaise foi, literally translated as bad faith, is not expressly defined by law. Courts tend to use the notion of fraud defined as an act (done in bad faith ) with the intention of obtaining an unfair or unlawful moral or material advantage or by passing the Law and legal duties. Whilst re-applying for the same French mark could be deemed a fraud, reapplying for the same mark as a CTM unlikely to be caught.

17 Bad Faith: The French Approach Examples of Bad faith: Registration of a trade mark with the sole intent to harm a competitor by artificially preventing him from selling his products on the French market (Cour de Cassation, Commercial Chamber, February 26, 2008, Nr ); Re-filing of a not exploited trademark vulnerable to a non-use action in order to artificially increase the length of the monopoly (Tribunal de Grande Instance Paris November 30, 2012);

18 France Bad Faith PIBD 1992 N 520 III-230) Laboratoires Biogalénique v. Société Conseil de Recherche et d applications scientifiques SCRAS filed a first trade mark GINKEBRAL in 1981 for pharmaceutical and medical goods (mark 1). SCRAS applied for regulatory approval in SCRAS filed a second identical GINKEBRAL mark in 1988 (mark 2) Court of Appeal ruled that pending regulatory approval is legitimate reason for non-use (Mark 1 survives). However, SCRAS applied for Mark 2 to artificially maintain its rights = fraud (mark 2 falls)

19 Bad Faith? Potential pharmaceutical filing strategies which could be deemed bad faith: Pipeline Scenario: To ensure you have cleared marks in key jurisdictions for when products come through the pipeline, you stockpile a portfolio of marks to choose from as and when each new product is developed. OHIM/France/Germany: Stockpiling itself is unlikely to be deemed bad faith. No requirement to certify intention to use on filing. UK: Stockpiling may fall foul of the intention to use requirements. Would need to rely on argument that at time of filing you did intend to use you just don t know for what product it will be used on.

20 Bad Faith? Re-filing after 5 years to preserve the mark Scenario: You have spent a considerable amount of time clearing your mark globally and have just obtained regulatory name approval. Your product is to be launched within 6 months but your mark is now vulnerable to a non-use challenge. Do you re-file? OHIM/UK/France/Germany: Danger re-filing will be deemed bad faith subject to opponent proving your intent. However, subject to competition law concerns, the only downside is loss of the later filed mark. Are you any worse off than if you did not re-file in the first place? For larger pharmaceutical companies, consider competition law. You can also rely on proper reasons for non-use to try and save the earlier mark. However, you are left exposed if you don t refile. What happens if product launch is 2 years away?

21 Bad Faith? Variations Scenario 1: Filing slight variations of marks to increase your chances of getting one of them through regulatory approval. Europe/France/Germany: unlikely to be deemed bad faith. UK: legitimate reasons but genuine intent to use all marks in series? Scenario 2: You are using brand [X] to sell you product and apply for slight variations to increase your armoury against third parties. Europe/France/Germany/UK: Could be bad faith? Can the other side prove Scenario 2 compared to Scenario 1?

22 Bad Faith? Blocking Registrations Scenario: You know your biggest competitor is thinking of bringing its blockbuster US product to Europe. You apply for its trade mark in Europe to stop them using the mark in Europe. OHIM/UK/France/Germany: Bad Faith!

23 Bad Faith So What? Competition Law Trade Mark Bullying PR Implications

24 Any Questions.. With thanks to: Christian Spintig (Germany) Pascale-lambert (France) Rob Jacob (UK) Eifion Morris +44(0)

Third Seminar on Bad Faith TM Filings. Ignacio de Medrano Caballero, OHIM TM5, Tokyo, 1 March 2016

Third Seminar on Bad Faith TM Filings Ignacio de Medrano Caballero, OHIM TM5, Tokyo, 1 March 2016 OUTLINE 01 02 03 04 Bad Faith as Invalidity Ground The Notion of Bad Faith European Case Law Bad Faith