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First to File Gains Trade Mark

PLEASE NOTE: Information in this article is correct at the time of publication, please contact DFA Law for current advice on older articles.

When an agricultural equipment manufacturer found that another company had registered a Community Trade Mark (CTM) that was similar to one of its own brand names, it opposed the registration, arguing that the company that had registered it had only done so to prevent it from continuing to market its goods under that name.

The right to a CTM is based on the ‘first to file’ principle, not the ‘first to use’ principle. However, where a CTM application is based on the bad faith of the applicant, the application may be opposed.

However, for these purposes, ‘bad faith’ means ‘dishonesty which would fall short of the standards of acceptable commercial behaviour’. The factors most relevant to making a decision that there has been bad faith are: 

  • the fact that the applicant knows or must know that a third party is using, in at least one EU Member State, an identical or similar sign for identical or similar goods, which could give rise to confusion with the sign for which registration is sought;
  • the applicant’s intention of preventing that third party from continuing to use such a sign; and
  • the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought.

These tests are demanding and there is therefore a high hurdle to overcome. In the case in point, the application to prevent the registration of the CTM failed.

Says Clare Towers, “The moral of the story is that if your trade marks are important to your business, get them registered before someone else does.”

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