There have been numerous recent decisions in the U.K. and the E.U. relating to bad faith by an applicant for a trademark which will impact on trademark rulings for businesses throughout Canada. In addition, the U.K. Canadian Trademark Act has been recently amended to add “bad faith” as a ground of invalidity, so it makes sense to follow these decisions.
Sky Plc v. Skykick UK Ltd
In the last comment about bad faith, it was suggested that the decision of Justice Richard Arnold in Sky Plc v. Skykick UK Ltd  EWHC 990 had brought some finality to determining what constitutes “bad faith” in the context of a trademark application or registration in England. Justice Arnold is an intellectual property specialist, his Decision was well reasoned, and he had just been appointed to the U.K. Court of Appeal. However, an appeal from his Decision was partially allowed on invalidity.  EWCA Civ 1121.
The Most Current Appeal
In this Decision, the Court said it is necessary to proceed with caution when applying findings about a trademark as a whole to the question of whether specific goods or services were applied for in bad faith. For example, the lack of intention to use in relation to some of the goods and services covered by the application for a trademark was not a ground for supposing there was a lack of intention to use regarding other goods and services. Each category needs to be considered specifically. The breadth of the terms used was not enough to lead to a finding of bad faith.
The reasons for allowing the appeal on this point are specific to the system of registration of trademarks in the U.K. This system differs from the Canadian system. However, this Decision may not be the last word, particularly as two Judges of the U.K. Court of Appeal have different views on this subject, which may make it a good candidate for an appeal to the U.K. Supreme Court.
What We Can Learn From The Decision
Leaving aside the issue mentioned above, the Court of Appeal summarized the jurisprudence, which should help determine what is required to show bad faith in a broader context. The applicable principles are as follows:
The principles set out above seem to have been accepted both in the U.K. and the E.U. Therefore, it makes sense for a Canadian court or the Trademark Opposition Board to consider their application in a Canadian context.
Author: John McKeown, PartnerGoldman Sloan Nash & Haber LLP
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These comments are general and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.
A version of this article originally appeared in the Lawyer’s Daily published by LexisNexis Canada Inc.