The Challenge of Proving Bad Faith in Oppositions

While the concept of filing oppositions to a potentially conflicting application for registration of a trademark is relatively simple, it's a challenging practice area of law. Choosing the grounds for your opposition is one part of the puzzle and proving it is another entirely. Among the most difficult grounds to prove is that of bad faith.

At the outset, all trademark applications are presumed to have been filed in good faith, so a significant burden of proof is required to overturn that presumption. The challenge is not lessened by the fact that there is no legal definition of 'bad faith' in the European Union. The standard of proof required is not merely difficult to meet; it is not even defined!

The overarching position of the Court of Justice of the European Union has long been that all relevant factors must be considered in an overall assessment of the case at hand. In more recent times, however, several cases have clarified critical elements of bad faith oppositions:

Koton v EUIPO

Initially, successful bad-faith applications centered around third parties deliberately applying for registrations for identical or very similar goods. This changed in the judgment in Koton v EUIPO, where it was determined that bad faith extends beyond this limitation. They found that in circumstances where there is no commercial logic that underpins an application might suffice to prove bad faith.

Skykick v Sky

The Skykick v Sky case was a long-running case with many twists and turns, which ultimately found that filing applications for trademarks in circumstances where there is no intention to use the trademark can constitute bad faith. However, there must also be a demonstrated dishonest intention to either obtain exclusive rights beyond the scope of trademark protection or to damage the other party's interests.

While these and other European Union decisions on bad faith filings provide welcome clarification, this does not mean that these elements are easy to prove. Nonetheless, the first step is always to be aware of the filings, bad faith or otherwise, in the first place – you cannot fight what you cannot see.

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