Registration trademark: in bad faith or rightful?
There is a case of bad faith, for example, if another party officially registers the trademark that you use for your business, behind your back. Recently there was a court case about a similar issue at the Court of Preliminary Relief Proceedings in The Hague. Dutch Intellectual property lawyer Martijn Kesler explains.
Ventoux3 seeks cooperation with Stophersentumoren
The foundation Ventoux3 was founded by some friends for a charitable cause. The idea behind it was to cycle up Mount Ventoux with racing bikes to raise money for research into brain tumours. Ventoux3 approached the foundation Stophersentumoren for cooperation.
Stophersentumoren is of the opinion that Ventoux3 is sailing under their colours
The event was organized for several years and proved successful. However, in the summer of 2015 there was a difference of opinion on whose event it actually was. The foundation Stophersentumoren was of the opinion that Ventoux3 is sailing under their colours and that they should be in charge of (the organization of) Ventoux3.
Both foundations register the trademark immediately after one another
Immediately after this difference of opinion became clear, Ventoux3 registered its trademark rights with the Benelux Office for Intellectual Property (BOIP). Several days later Stophersentumoren also attempted to register the trademark rights for Ventoux3. As there were now two registrations, the issue arose who was entitled to the word mark and the logo.
Stophersentumoren then went to the court in preliminary relief proceedings and claimed that Ventoux3 had registered its trademark in bad faith.
The registration system of the BOIP underpins trademark law
In general trademark law assumes a registration system. The registration system means that a trademark right is acquired by the first registration. This would mean that Ventoux3 registered the rights before Stophersentumoren and therefore acquired the word marks and logos of Ventoux3. However, there is an exception to this rule: if the trademark is registered in bad faith.
When is a trademark registered in bad faith?
Whether or not a trademark registration is in bad faith has to be assessed for each case separately. In article 2.4 sub f of the Benelux Convention on Intellectual Property (BCIP) the following is considered (among others): (i) the knowledge whether a third party in at least one member state uses the same or a similar mark which can create confusion; (ii) the intent of the applicant is to prevent a third party from further use of this mark; and (iii) the scope of the legal protection for the mark of a third party and for the mark for which registration is applied.
Court: Ventoux3 did not register the mark in bad faith
The court in preliminary relief proceedings found, based on the above criteria, that Ventoux3 did not register its trademark in bad faith, as it was shown that obviously Ventoux3 was the initiator and had in fact approached Stophersentumoren with their idea. Also, Ventoux3 had designed the logo, all social media contacts were through Ventoux3 (not through the organization of Stophersentumoren) and it was clear that Stophersentumoren in general was not closely involved with the organization of Ventoux3. All of the above meant that, based on this ruling, Ventoux3 remained the party entitled to the trademarks that they had registered at the Benelux Office for Intellectual Property.
AMS Advocaten specializes in trademark law
Stealthily registering a trademark to create a negotiation position is quite a common occurrence. The process to contest this is by arguing that a trademark is registered in bad faith. If this argument is successful and if there is in fact registration of a trademark in bad faith, not only the ownership of the trademark concerned, but also the cost award has to be taken into account (pursuant to article 1019h of the Code of Civil Procedure). AMS Lawyers has a broad experience in the field of trademark law.