This case concerned an opposition to register trade mark in respect of class 30 cheese related products.
The trade mark Opponent was a food manufacturer and had been trading under its trade mark since 1986. The trade marks of each party were substantially identical/
By way of background a director of the trade mark Applicant had previously met the directors of the Opponent in 2009, and negotiations toward a distribution agreement for the Opponent’s goods under the mark continued over sometime between the parties. Eventually a supply arrangement was organised and the director of the trade mark Applicant purchased (through another related company) supplies of the trade mark Opponent’s products.The Opponent became aware of the applications, and prior to filing the opposition had attempted to resolve the dispute by writing to the Applicant, to which there was no response.
The Delegate considered the application under section 62A that the application to register the mark was made in bad faith.
The Delegate referred to earlier case law on the topic to the effect that section 62A focuses on whether in all the circumstances the Applicant’s decision to apply for registration at the relevant date would be regarded as being in bad faith by persons adopting proper commercial standards.
Consideration of the conduct of the trade mark Applicant was complicated for the Delegate as the Applicant had failed to appear at the hearing. The Delegate exercised caution in line with Jones v Dunkel so as not to draw a negative inference from the silence of the Applicant.
The facts considered relevant by the Delegate were as follows:
- the applicant was aware of the opponents trade mark;
- it was unlikely that during the negotiations discussed above the opponent surrendered title to the trade mark;
- he two parties having entered a distributor relationship gave the applicants action the quality of bad faith and exploitative behaviour.
The Delegate found the conduct of the applicant to be bad faith and as such opposition was established and the registration of the trade mark was refused.