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Wednesday, 9 April 2008

Trade mark trolls reach the UK


The IPKat has been tipped off about this story from the BBC about a trade mark "troll" who has registered or applied to register trade marks which correspond with the names of existing Scottish businesses and have then offered to sell or "lease" them to the businesses in question for large sums of money. The person in question appears to be targeting the juice bar sector and has registered 40-odd juice-related names.

The IPKat notes that the existing businesses may be able to oppose or invalidate registrations based on marks protected by passing off, and perhaps to rely on bad faith grounds. However, the Kat has a niggling doubt - is it truly bad faith to register in a first to file system?

8 comments:

Malte said...

Maybe the ECJ (C-529/07) will answer your question in a while ...

http://curia.europa.eu/jurisp/cgi-bin/form.pl?lang=en&newform=newform&alljur=alljur&jurcdj=jurcdj&jurtpi=jurtpi&jurtfp=jurtfp&alldocrec=alldocrec&docj=docj&docor=docor&docop=docop&docav=docav&docsom=docsom&docinf=docinf&alldocnorec=alldocnorec&docnoj=docnoj&docnoor=docnoor&typeord=ALLTYP&allcommjo=allcommjo&affint=affint&affclose=affclose&numaff=&ddatefs=&mdatefs=&ydatefs=&ddatefe=&mdatefe=&ydatefe=&nomusuel=&domaine=&mots=bad+faith+trade+mark&resmax=100&Submit=Submit

Anonymous said...

Is this the same Kat who wondered how on earth someone came close to registering the name of a political party and then seek to flog it back to the rightful owners (see Fine Gael case)?

It may be 'first to file' regime, but you still have to sign a declaration of intention to use. Does 'use' include asking the 'rightful' owners for large amounts of money for something that they already have rights in ?

I love the bit in the report that refers to "trade mark trolls, also known as patent trolls".Hmmm....

Andy said...

Yes, this sounds like bad faith - see Moolicious Opposition decision: http://www.ipo.gov.uk/tm/t-decisionmaking/t-challenge/t-challenge-decision-results/o33706.pdf

Ilanah said...

I knew I'd get into trouble for that...Some of the Kat's brains belong to academics, and therefore the Kat reserves the right to be inconsistent - sorry - to objectively acknowledge both sides of the argument.

In this case the moral side of the Kat is in no doubt that the "trolls'" behaviour takes advantage of others for no good reason except to make a fast buck, and therefore should be stopped. The argument for adopting the other approach which, to be fair, doesn't actually answer the moral argument, but instead rests on a different policy is does one automatically get a property right through use? One could link this into all the nice arguments about the limits of unfair competition - if there's no right there then is there unfairness for a person to take an opportunity at the expense of another?

Thomas said...

The German Federal Supreme Court has published a decision today that addresses this issue as well (http://juris.bundesgerichtshof.de/cgi-bin/rechtsprechung/document.py?Gericht=bgh&Art=en&az=I%20ZR%2038/05). The court held that the "troll's" application amounts to unfair competition if he was aware of the foreign mark, and if it was more or less evident that the owner of this foreign mark would want to use the mark in the "troll's" country as well within a reasonable period of time.

Anonymous said...

It must be a terrible burden to have the brain of an academic.

Ilanah said...

It is - I should really give it back to the academic that I stole it from.

Anonymous said...

If he is not a competitor and instead he is just a tm troll its not likely that one could rely in unfair competition. Why not lack of legitimate interest? Dishosnest intent of use? All the moral issues would be safeguarded here.

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