• In the UK Office

    More Cases of Bad Faith

    Two more cases where applications were found to have been filed in bad faith have been reported.

    In the first case (Tesco Stores v Wal-Mart Stores), the mark at issue was Tesco People Make The Difference filed by the UK supermarket giant Tesco for a wide range of goods and services. The application was opposed by Wal-Mart, the US supermarket behemoth, on the basis, inter alia, that it had been filed in bad faith (Section 3(6) of the 1994 Trade Marks Act).

    The evidence showed that, on the day Wal-Mart had made an offer to buy another UK supermarket chain Asda, they (Wal-Mart) had filed 7 UK applications for slogans, such as Our People Make The Difference, Everyday Low Prices and We Sell For Less. As part of their campaign to counter the effectiveness of future Wal-Mart/Asda competition, Tesco launched a programme accusing Wal-Mart of seeking to "buy up the English language". As part of this programme, Tesco filed 8 UK applications for marks of their own including the mark opposed and Tesco Everyday Low Prices and Tesco We Sell For Less. In a press release, they (Tesco) also informed the public that, to prevent Wal-Mart's alleged aims, they had filed trade mark applications for Wal-Mart's slogans "to ensure that they remain in the public domain".

    Wal-Mart's attack under Section 3(6) comprised two main arguments. These were that:

    • The application represented "spoiling tactics" on behalf of Tesco, and

    • Because the mark was chosen as a "blocking device" it was not applied for with genuine use in mind. The Hearing Officer found in favour of Wal-Mart on the ground of bad faith and commented as follows on Tesco's application:

    • The applicant's declared intention in its press release was that they were applying for the mark in a public spirited campaign to ensure the language used remained in the public domain. Nowhere did they state that they intended to use the mark themselves.

    • Tesco's proper course should have been to oppose Wal-Mart's applications (if accepted). Applying for the same words and phrases as Wal-Mart was an inappropriate way for Tesco to make their point. Fighting public spirited battles on behalf of others, by filing trade mark applications on the basis that Tesco had done, was not the purpose of trade mark law and ran the risk of an accusation of bad faith.

    • Tesco was not using the Trade Mark Register for its proper purpose and their attempt to register the mark was "directly contrary to the spirit and intent" of the 1994 Act.

     

    The second case involved an application to invalidate a registration for the trade mark Ülker (stylised) registered in respect of foodstuffs in classes 29 and 30. The proprietors (I. McDonald and Z. Khurshid) had acquired the registration in 1997. They did not, however, take any part in the invalidation proceedings.

    The applicant to invalidate (Ülker Gida Sanayi Ve Ticaret) filed evidence to the effect that they had used a very similar (or identical) stylised form of the word Ülker in the UK in relation to chocolate and biscuit confectionery from 1990 onwards.

    The Hearing Officer again found that the bad faith case was proved and that the registration should be declared invalid. In particular, he took into account:

    • The very close resemblance of the marks,

    • The lengthy and undisputed history of Ülker Gida's use of their stylised mark,

    • The absence of any authorisation given to the UK registered proprietors to register and/or use the mark,

    • The broad specification of foodstuffs claimed in the registration, and

    • The fact that the registered proprietors did not contest the application (to invalidate) or provide an alternative version of events.

     

    Comment

     

    The above cases are classic illustrations of behaviour by trade mark proprietors that is likely to lead to a finding of bad faith. In the Tesco case, it was clearly a mistake to file 8 Tesco alternatives to the Wal-Mart marks at the same time. It was also a mistake to admit, in a press release, the real reason for the filings. If spoiling or blocking tactics are the aim, a much more subtle approach than this is required. For details of more subtle approaches, please contact the Jenkins Trade Mark Department.

    As far as the Ülker case is concerned, it is always a mistake for a potential UK usurper of a trade mark that is used abroad (but not, at present, in the UK) to file for the same stylised version of the mark or for the same combination of word mark and device. Further, in these circumstances, once the usurper's registration is attacked on the basis of bad faith, he must fight the action and must offer a convincing reason for his choice of mark, if the bad faith action is to be rejected and the registration sustained.