A difficult distinction
This detailed decision leaves an open question, writes Dewdney Drew. BL O/677/19, European Forestry and Environmental Skills Council v A1 Arborists Ltd (Opposition), UK IPO, 5th November 2019
A1 Arborists Ltd (A1) and the European Forestry and Environmental Skills Council (EFESC) had worked together for a period of time, with a view to establishing a common certification standard for chainsaw competency, one of the monikers for which would be “ECC European Chainsaw Certificate”.
A notable point in the collaborative period was a meeting in London in August 2011, when the parties concluded the meeting by signing a number of action items written on a whiteboard. One of the action items was that intellectual property would be shared. After that, the parties went their separate ways.
In May 2017, A1, which had pursued its own programme in the UK following the parting of ways, filed a number of UK trade mark applications, including for ECC EUROPEAN CHAINSAW CERTIFICATE, to secure its position when it appeared that EFESC was claiming exclusive rights to the mark. EFESC opposed the applications on a number of grounds, including bad faith.
At a hearing before the UK IPO, four of the eight applications survived opposition, and EFESC failed to demonstrate genuine use of its earlier EUTM for ECC EUROPEAN CHAINSAW CERTIFICATE which was registered for “certificates” rather than training or certification services. However, the remaining four, including ECC EUROPEAN CHAINSAW CERTIFICATE, were found to have been filed in bad faith and were refused.
A1 appealed to the Appointed Person. The grounds included:
- The relevant date for assessing bad faith was May 2017 and not August 2011;
- Regard was not given to the absence of usage by EFESC in the UK and the years of usage by A1, prior to A1 filing the UK applications;
- The Hearing Officer (HO) did not ascertain the actual state of mind of A1 in May 2017 but rather what it should have known;
- A negative finding as to bad faith was not open to the HO in the absence of an unequivocal challenge to the written evidence, cross-examination (of A1’s principal) and cogent or persuasive reasons in support from EFESC;
- A1’s evidence that it filed the applications to secure its position should be accepted;
- It cannot be bad faith to file a UK application for a mark that may conflict with another mark being used abroad, where the other party has not used the mark in the UK for five years; and
- No reliance should have been placed on A1’s alleged failure to investigate the validity of EFESC’s EUTM, since an investigation would have shown it not to have been used (as the HO indeed found).
The appeal was dismissed on all grounds. The five-year non-use period was rejected as a guideline for the expiration of “a bad faith event”. It was found that the HO had duly assessed the Applicant’s state of mind in May 2017.
The absence of cross-examination was found to be no bar to a finding of bad faith, especially considering that evidence is filed sequentially at the UK IPO, thus allowing a witness to respond to any challenges to his evidence as they arise.
In conclusion, the distinction between conflict of rights disputes and bad faith disputes can be difficult to draw. Ultimately, the Appointed Person found this case to concern the latter, with a decision that leaves open the question as to when the possibility of a counterparty claiming bad faith “expires”.
Key points
- The expiry of the five-year non-use period is not determinative of a bad faith allegation
- Bad faith can still be found in the absence of a cross-examination
- Filing a trade mark application to preserve your position in a conflict of rights scenario can still be bad faith
Author
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Dewdney Drew
Murgitroyd & Co