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Tuesday, 21 September 2004

IPKAT QUESTION: TRADE MARK BULLIES

The IPKat wants to know, what happens if I wrongfully use bullyboy tactics to persuade my competitors that they need to obtain a licence from me to use a symbol (X) even though legally they don't and, because of my efforts, the symbol acquires distinctiveness and consumers eventually view the mark as being my badge of origin. Does my misbehaviour earn me a valid trade mark registration?

As ever, please post your answers as comments below, or email them to theipkat@yahoo.co.uk.

2 comments:

Jeremy said...

I think the bully gets away with it, from a trade mark point of view. If the relevant consumer now sees the symbol X as being distinctive of the bully's goods or services, I don't see how the CTM Regulation or the Harmonisation Directive can be invoked so as to prevent the mark's registration.

The bully's application certainly doesn't fall into the category of bad faith and, while his behaviour may be outrageous, it has to be the mark that is contrary to public policy or morality, not the behaviour of the applicant, if the application is to fail.

The best the bullied licensee can hope for is for his licence to be vitiated for coercion or duress. Also, if the bully has a dominant market position, he may be acting in breach of Art.86 EC - but none of this affects the registrability of the bully's trade mark.

Anonymous said...

Electrocoin seems relevant here?

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