BAD FAITH DECISIONS
Te fourth case concerned a registered mark showing a space shuttle in Chinese characters and a device (see Fig 4 above leſt), under Trademark No.300260144 in Class 16. In that case, an application for declaration of invalidity of the mark was filed by a Chinese company (the applicant) who claimed to be the registered trademark owner of the marks ‘space shuttle in Chinese characters' and ‘shuttle device’ in China in the years 1999 and 2002, respectively. Tese two marks comprise the lower and upper parts of the registered mark at issue.
Te hearing officer sustained a case of bad faith on the basis of the following observations:
Court of Appeal held that:
“Te words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However, the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting the proper standard.”
Te combined test for dishonesty is defined by Lawrence Collins J. in Daraydan Holdings Ltd v Solland International Ltd as follows:
“... that the tribunal must ascertain what the defendant knew about the transaction or other mattes in question. It must then be decided whether in the light of that knowledge, the defendant’s conduct is dishonest judged by ordinary standards of honest people, the defendant’s own standards of honesty being irrelevant to the determination of the objective element.”
Te third case concerned a registered mark (see Fig 3 above leſt) under Trademark No.300611261
www.worldipreview.com
in Class 9. An application for declaration of invalidity of the registration of the said mark was filed by Costex Corporation, a company in Florida, US, on the grounds, inter alia, that the said mark was filed by its individual registered owner in bad faith. Te applicant adduced evidence demonstrating that the individual registered owner was a director of a Hong Kong company, namely Miami Cat-Mtb Machine Equipment (Hong Kong) Holdings Limited (the individual registered owner’s company). Te applicant’s evidence further elaborated that the applicant’s head office is located in Miami. ‘Cat’ refers to Caterpillar in the US, whereas ‘Mtb’ refers to Mitsubishi Heavy Industries in Japan.
Te goods of interest offered by the individual registered owner’s company on its website are spare parts for machinery, which is the applicant’s sector of interest. In addition, the design of the web page of the individual registered owner’s company is closely similar to the applicant’s, and the applicant’s mark was being used there.
Te hearing officer sustained a case of bad faith on the basis of the following observations :
• Te individual registered owner had failed to offer an explanation why the typeface of the letters as appearing in the mark at issue is closely similar to the applicant’s mark, or why his company used the applicant’s mark without permission.
• Te individual registered owner’s company was based in Hong Kong but selected to use ‘Miami’, a city in US, in its name. Tere is no connection between the individual registered owner’s company and Miami (date of decision: March 19, 2012).
World Intellectual Property Review Annual 2012 41
• Te name of the owner of the registered mark at issue is closely similar to the name of a previous customer of the applicant. Te owner of the registered mark at issue and the said previous customers were located at the same district in Guangdong city, China. Te owner of the registered mark at issue should have been aware of the use of the applicant’s marks at the time it filed its application on July 31, 2004.
• Representation of the registered mark at issue is visually and conceptually similar to the applicant’s marks. Such a coincidence could not happen by chance. Te owner of the registered mark at issue had failed to offer an explanation how it created the mark, nor did it deny the allegations made by the applicant (date of decision: March 27, 2012). n
Kenny Leung is an in-house counsel at Wenping & Co. He can be contacted at:
kenny@wenping.com.hk
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