Section 3(6) 

In this blog, we are focusing on one part of the section 3(6) claim. Section 3(6) states that “a trade mark shall not be registered if or to the extent that the application is made in bad faith”.

The Opponent’s bad faith claim was broken down into two parts, namely;

1. The application was not made in the course of fair and honest commercial behaviour because the parties were engaged in a dispute at the time and it was alleged that it was the intention of the applicant to hijack the Opponent’s earlier marks for the Applicant’s benefit and to block the Opponent from operating its brand.
2. The specification of the application is so broad that the Applicant cannot have a bona fide intention to use the mark. As such, the application was filed for purposes other than to engage in fair competition and honest practice as it was only applied for with the intention of undermining the Opponent’s interests. We are most interested in this element of the bad faith claim, particularly since this is one of the first cases to be assessed by the UKIPO following the SkyKick judgement.

It is worth mentioning that this application was put on hold pending the infamous “SkyKick” Supreme Court judgement. Once the decision was handed down, the opposition proceedings then resumed with the UKIPO taking the SkyKick findings into consideration.

The Specification

Honing in on the second part of the bad faith claim, it is no surprise that it formed part of the Opponent’s case and that the Opponent requested it be considered before considering the other grounds of opposition, as the class 35 specification was 47 pages long, containing a vast range of services, including services in fields as disparate as accounting, gas meter readings, retail of sex aids, and theatrical casting agencies.

The Applicant did not offer any explanation for the breadth of its specification and did not help matters by describing its business in its Counterstatement with references to a narrow field of activity relating to research and events for black and ethnic minority theologians. The Registrar considered it “is somewhat vague as to what the applicant’s intentions actually are” – leaving them little option but to conclude, based on the Applicant’s description and some evidence put in by the Opponent regarding the Applicant’s business, that the business of the Applicant was in research and events which are theological in nature.

SkyKick 

In this decision, the Registrar references the part of the SkyKick judgement where Lord Kitchen states that if the Applicant fails to “provide a reasonable explanation and justification for its actions” then it leaves the door open for a finding that the application was made in bad faith in respect of those goods and services, particularly taking into consideration the breadth and nature of the specification when compared to the size and nature of the Applicant’s business.

Decision 

The Registrar concluded that as the specification was extremely broad and disparate, it was consistent with the prima facie bad faith position established by the Opponent. Once this position was established, the burden shifted to the Applicant to successfully rebut the claim. However, the Applicant failed to do this with only a weak Counterstatement put in by way of a defence.

In view of the Applicant’s failure to rebut the claim and given the disconnect between the Applicant’s specification and its business intentions (in so far as they could be inferred from the evidence submitted by the Opponent and the business description provided by the Applicant), the UKIPO found that the no bona fide intention to use limb of the section 3(6) ground succeeded in full against all terms in class 35.  Considering this, the UKIPO agreed with the Opponent that it was not necessary to review the other grounds of opposition and concluded the matter, refusing the application in its entirety.

Comment

The Applicant’s specification in this case clearly extended way beyond their actual and intended area of activity and this coupled with the Applicant’s failure to put in a strong defence, made it an easy win for the Opponent. It feels as though the Applicant could have found something in its specification to support its actual and intended business activities and overcome the no bona fide intention to use part of the bad faith claim in respect of its core services, but it seems that because it failed to direct the Registrar to any part of the specification to support its actual and intended use, the bad faith ground was upheld for the specification in its entirety.

This decision does not mean that it will always be straight-forward to prevent the registration of marks for broad and lengthy specifications and we consider it good practice to provide coverage beyond the current scope of an applicant’s business into areas of possible future expansion. However, applicants should be prepared to justify broad specifications or risk having their specifications cut down.