English Court of Appeal Rules that Dishonesty not Required to Establish Bad Faith in Trade Mark Applications

October 2004

Record Labels, Merchandise, Artist

Harrison v Teton Valley Trading Co [2004] EWCA Civ 1028

The Court of Appeal has upheld the decision of the Registrar of Trade Marks to reject an application for the trade markChina White as the application had been made in bad faith. The Applicant had applied to register the trade mark for a cocktail drink. The Opponents, the owners of the well known London night club named China White, argued that the registrations should be refused under section 3(6) of the Trade Marks Act 1994 which states that “a trade mark shall not be registered if or to the extent that the application is made in bad faith”. The drink was developed by a former employee of the night club who had been asked to develop the cocktail by the Opponent and had signed a confidentiality agreement to protect the recipe. Despite the agreement, the former employee later approached the Applicant and told him that he had developed a cocktail called China White and a derivative of it was to be served at the night club. The employee, Mr Rymer, told the Applicant that he was not bound by a formal contract with the night club and represented that he was the sole proprietor of the name and the recipe. The Applicant then incorporated a company, China White Limited, with Mr. Rymer as a director, and sought to register the trade mark. The Registrar of Trade Marks concluded that the opposition should succeed and refused the application. The Applicant’s appealed to the High Court but the appeal was dismissed. The Court of Appeal rejected the Applicant’s argument that the words “made in bad faith” required that the application should be made “dishonestly”: The Court held that the test was whether the knowledge of the Applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards – on the facts this was not acceptable commercial behavior and the Applicant should have done more to satisfy himself of the credentials of Mr Rymer.

For the text of the decision, see: http://www.courtservice.gov.uk/judgmentsfiles/j2719/harrison-v-teton.htm

For a related news story, visit the following site : See a summary of the case by Nick Wong at E-Tipshttp://www.dww.com

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