A recent High Court decision on appeal concerning Trump International Ltd, a company not associated with Donald Trump, agreed with the UKIPO hearing officer that its application to register the mark “TRUMP TV” had been made in bad faith.

As Carr J noted at the start of this judgment in Trump International Ltd v DTTM Operations LLC [2019] EWHC 769 (Ch) “[a]ttempts to register well-known trade marks by parties who have no connection with such marks are a global problem”.

In many jurisdictions a mark can be attacked on the ground of “bad-faith” meaning that the making of the application was for an objective which could not be justified, including dishonesty, but also “some dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area being examined” (see Gromax Plasticulture Ltd at 47).

Background

On 30 October 2016, the appellant, Trump International Ltd applied to register the words “TRUMP TV” as a UK trade mark in respect of certain goods and services. It had no connection with Donald Trump, who, at the date of the application, was standing for election as President of the United States.

An opposition was brought by DTTM which holds and administers the trade mark registrations previously owned by Mr Trump (such as “TRUMP”).

Various grounds were relied upon on for the opposition: bad faith as well as s(5)(2), s(5)(3) and s5(4)(a) of the Trade Marks Act 1994. The hearing officer upheld the opposition but only dealt with the issue of bad faith. He made a cursory reference that if it had been necessary, he would have also held the other grounds succeeded.

Evidence at Opposition

Before the hearing officer DTTM had filed the following evidence:

1- The sole director of Trump International was Mr Michael Gleissner who is the sole director of over 1,000 UK companies almost all of which are believed not to be trading.

2- Mr Gleissner was reported to be behind a significant number of companies in other territories. In an article from World Trademark Review, Mr Gleissner was identified as being behind, or linked to, a network of company name registrations, domain name registrations and trade mark applications/registrations over the last few years (see 8 of the judgment);

3- Mr Gleissner, through the companies that he controls, has been involved in numerous trade mark proceedings in the UK and elsewhere. Reference was made to 68 applications by companies under the control of Mr Gleissner to revoke trade marks for non-use which were owned by Apple. The UKIPO in Sherlock Systems CV v Apple IncDecision O/015/17 had found that those proceedings had been brought for an ulterior and improper purpose and should be struck out as an abuse of process.

4- Mr Gleissner was the sole director of EUIPO International Ltd which had applied for Portuguese and Canadian trade marks for EUIPO, despite that trade mark being associated with the EUIPO.

5- Mr Gleissner’s companies had been accused of involvement in “reverse domain name hijacking” which involves filing trade mark applications in respect of well-known third-party trade marks whilst simultaneously attempting to cancel earlier registrations which could be used to oppose the application. Once registered, the new trade mark is used as the basis for a domain name complaint against the domain name corresponding to the revoked trade mark. Once the domain name is transferred to the owner of the new trade mark, it can be sold at a profit or retained whilst it appreciates in value.

6- In the view of DDTM, the application was filed to take advantage of the reputation of the TRUMP mark, damage it, disrupt the legitimate interests of DTTM in that mark, and/or to cause DTTM to incur unnecessary time and expense in trade mark proceedings.

Trump International did not file any evidence in reply nor seek an oral hearing to challenge DDTM’s evidence. It therefore stood unchallenged. Although Trump International was a separate legal entity, the fact Mr Gleinssner was its sole director meant that its motivation for applying for the mark was directed by him.

Decision of Opposition

The hearing officer went on to find that Mr Gleissner’s pattern of behaviour could not of in itself be a basis upon which the opposition could succeed. However, when taken in the context of the application, where the mark involved the distinctive name of an exceptionally well-known businessman and public figure and when taken with the further allegations of a motivation to interfere with the legitimate interests of DTTM, that combination founded a prima facie basis for bad faith.

After considering a number of other factors the hearing officer went on to say that he was satisfied that the application formed part of a series of abusive registrations made by Mr Gleissner under the guise of one of his companies to seek protection over famous third-party marks. He also found it was unlikely that there was an intention to use the mark. He concluded overall that Trump International had acted below the standards of acceptable commercial behaviour judged by ordinary standards of honest people. Accordingly, he refused the application on the ground of bad faith.

 The Appeal

Trump International appealed to the High Court on various grounds. One was that the hearing officer was not entitled to consider “similar fact evidence” i.e. the evidence of Mr Gleissener’s previous activities. By taking those matters into account the hearing officer was said to have shown “bias”. Carr J rejected that suggestion for the following reasons:

1- The authorities established that a civil tribunal could take into account similar factual evidence where the evidence was potentially probative in the proceedings and secondly, where the admission of such evidence would accord with the overriding objective of deciding cases justly.

2- In copyright cases, similar fact evidence can be relevant. The Judge referenced an exert from legal text book “Copyright” by Copinger & Skone James: “the issue in a copyright case is whether the similarity between the claimant’s work and the defendant’s work is due to copying or is a coincidence, it is relevant to know that the defendant has produced works which bear a close resemblance to works other than the work in question which are the subject of copyright. Whereas similarity between two works might be mere coincidence in one case, it is unlikely that there could be coincidental similarity in, say, four cases. The probative force of several resemblances together is much better than one alone.”

3- That reasoning could well apply to an allegation that a third-party trade mark has been applied for in bad faith. The probative force of several instances of such applications is obvious. Such instances, if based on solid grounds, are likely to require evidence from the applicant to refute the inference of bad faith that may otherwise be drawn from them.

4- The evidence was both admissible and relevant. Trump International had applied to register a trade mark which was plainly associated with Mr Trump, with whom it had no connection. That, of itself, required a very clear explanation to refute an inference of bad faith. The similar fact evidence was not mere rumour or supposition.

Trump International also sought to adduce evidence on appeal. This was rejected. In short: the evidence was available and could have been filed before the hearing officer but it had taken a conscious decision not to. Furthermore, the evidence made no attempt to deal with the hearing officer’s finding that one of the purposes of the application was to gain some advantage from the notoriety of Mr Trump. It therefore would have made no difference to the decision.

Moving Forward

Carr J in obita dicta noted the relevant approach for brand owners when faced with bad faith applications, stating:

“I should add that the remedies of brand owners, when faced with bad faith applications, are not limited to those available in proceedings before the IPO, which may take some considerable time to resolve. Section 32(3) of the Trade Marks Act 1994 requires an application to state that the mark applied for is being used, by the applicant or with his consent in relation to the goods or services for which it is sought to be registered, or that the applicant has a bona fide intention that it should be so used. Such a statement, in relation to a well-known third-party trade mark with which the applicant has no connection, may give rise to causes of action for infringement of trade mark and passing off.

This is interesting obita dicta from Carr J when contrasted with the obita dicta of Robert Walker J in Barnsley Brewery Co Ltd v RBNB [1997] FSR 462 at 471 on whether a mere trade mark registration / application is sufficient to found a quia timet action (i.e. apply for an interim injunction):

“I have very considerable doubts about whether the plaintiff could have taken action successfully in March 1995 or soon after that time. … Any quia timet proceedings by the plaintiff launched in or soon after March 1995 would probably, it seems to me, have failed as premature. The only evidence to place before the court of threatened damage would have been the two labels on the trade mark application, and the solicitors’ letter of March 1, 1995.”

Therefore, the point on whether the mere application for a UK trade mark amounts to a threat to use that mark would appear to be open but Carr J’s analysis suggests it might be possible and be receptive to the Courts.