Registering a trademark in bad faith
The literal meaning of bad faith is, “intent to deceive or mislead another to gain some advantage; dishonesty or fraud in a transaction.” It is an undisputed fact that intellectual property is a negative right and is built on pride and reputation. There are always wrongdoers and law breakers who try to capitalize on reputation and goodwill of a popular trademark for their own benefits.
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Trademark Legal Provisions
Section 11(10)(ii) and Section 47(1)(a) specifically deal with trademark registrations under bad faith and or without bona fide intention to use the mark.
Section 11(10)(ii) – While considering an application for registration of a trade mark and opposition filed in respect thereof, the Registrar shall take into consideration the bad faith involved either of the applicant or the opponent.
Instances of Bad Faith
1) Seeking registration of a popular and or well-known brands in different classes for different goods and or services – E.g., “Maggi” Trademark Case
2) Seeking registration of a well-known international trademark that has not been registered in India.
3) Seeking registration of a mark on an intent-to-use basis without any bona fide intention to use the mark.
4) Seeking registration with claiming seniority by using a false “first date of use in commerce.”
Case of Bad Faith
Sony Case – Please read here
“Reddy” Trademark Case – Please read here
Domain Cyber Squatting Case – Bad Faith
ICICI Bank Ltd vs Chuandong Xu & Anr. D+ on 22 December, 2011 – In this case, an individual based in China had registered a domain name, www.icicigroup.com. After ICICI Bank’s attempts to solve the dispute through the WIPO Arbitration and Dispute Resolution Forum, it filed a suit before the Honourable Delhi High Court seeking for permanent injunction against the individual and the domain name registrar, the Hon’rable Court passed an order against both defendants.
General Tips to Business Owners
- Hire an experienced trademark lawyer.
- Conduct trademark clearance searches before applying for registration or even before starting your business.
- Do not use broad categories of goods and or services which are not part of your business.
- File proof of trademark use before the appropriate Trademark Registry through Affidavit.
- Monitor your brand closely online and offline and take appropriate legal action against infringers without any delay.