Bad faith trademark registration

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A bad faith trademark application is the registration of a sign for a (German) trademark (at the German Patent and Trademark Office ) (DPMA) by an applicant in bad faith. For a trademark applicant to act in bad faith, it is a condicio sine qua non ( necessary condition ) that the (later) trademark applied for by him for certain goods or services is identical or can be confused with a sign that does not enjoy formal trademark protection and that another for the same or similar goods or Services used and the trademark applicant knows this.

Legal basis

In the course of its directive competence, the EU has given the legislators of the member states corresponding requirements: "Each member state can provide that a trademark is excluded from registration or, in the case of registration, is subject to a declaration of invalidity if and to the extent that the trademark can be confused with a trademark, which was used abroad at the time the application was filed and will continue to be used there if the applicant filed the application in bad faith ”. The German legislature has made use of the possibility given by the directive in question. Accordingly, according to the Trademark Act (MarkenG) applicable in Germany for the registration and protectability or susceptibility of a trademark to deletion, trademarks applied for in bad faith are not registrable and therefore not protectable, Section 8 (2) no.14, Section 50 (3) no.1 , 3 and § 54 MarkenG.

If a trademark applied for in bad faith is registered, it is void and can be canceled ex officio by the DPMA, Section 50 (3) of the Trademark Act. The ex officio deletion procedure may only take place if it is initiated within a period of two years from the date of registration, Section 50 (3) No. 1 MarkenG, and if the entry is clearly made contrary to the provision of non-registrability has been, § 50 Abs. 3 Nr. 3 MarkenG.

A trademark registered in bad faith can also be deleted upon request , Section 50 (1) MarkenG. The request for deletion must be submitted to the DPMA, Section 54 (1) sentence 1 MarkenG, to which everyone has the right, Section 54 (1) sentence 2 MarkenG. If an application for deletion is made or if the deletion procedure is initiated ex officio, the DPMA will inform the owner of the registered trademark about this, Section 54 (2) sentence 1 MarkenG. If he does not object to the deletion within two months after delivery of the notification, the trademark will be deleted, Section 54 (2) sentence 2 MarkenG. If he objects to the deletion, the deletion procedure will be carried out, Section 54 (2) sentence 3 MarkenG.

Conditions of bad faith

General principles

The concept of bad faith in the trademark sense is based on the general legal principle that the exercise of a law is not permitted if it constitutes an abuse of the law. This principle also applies to trademark law. On this basis, which follows from Article 3 (2) (d) of the First Council Directive No. 89/104, the applicant is acting in bad faith if the application has been made in an immoral or illegal manner.

Further (special) requirements

The case law of the BPatG and BGH has identified two groups of cases:

Immorality when acquiring the brand

If the label used by the previous user constitutes an asset that is worthy of protection, the trademark owner knows this and still allows a designation to be registered as a trademark in order to disrupt the ownership of the previous user or prevent him from using the designation, this may be immoral. However, the trademark must be identical or confusingly similar to the name used by the previous user and be registered for the same or similar goods or services. In principle, there is no need to make high demands on the trademark owner's knowledge of his interference with the acquis that is worthy of protection, which should facilitate the evidence in this regard in many cases. In addition, a classification of the interference as immoral presupposes that it was carried out without sufficient objective reason.

Abuse of rights when using the trademark in competition

Furthermore, it can be viewed as reprehensible and thus illegal in terms of competition law if a trademark applicant uses a blocking effect associated with the registration of his trademark - contrary to the actual purpose of a trademark - in order to prevail in the competitive battle. In this case, it does not depend on any acquisitions of the previous user that are worthy of protection. Rather, bad faith is to be affirmed if the registration of the trademark and the trademark rights acquired as a result prevent a company from competing on the market .

Bad faith when registering the trademark

Finally, Section 8 (2) No. 14 MarkenG requires that the applicant acted in bad faith when registering . The relevant point in time for the test for bad faith is therefore the time of registration. In not a few cases, however, it will be possible to conclude from subsequent bad faith behavior on the part of the applicant that he was already acting in bad faith at the time the trademark was applied for.

See also

Individual evidence

  1. ↑ Art. 4 para. 4 lit. g of Directive 89/104 / EEC (PDF)
  2. ↑ § 242 German Civil Code ( BGB )
  3. ↑ Karl-Heinz Fezer , Markenrecht, 2nd edition, Munich 1999, Rn 23 on § 50 MarkenG (old version)
  4. ↑ Adolf Baumbach, Wolfgang Hefermehl, competition law, 17th ed. 1993, inlet UWG, marginal no. 423 ff
  5. ↑ a b c Dietrich Scheffler, (Possible) trademark law conflicts in lease contracts , especially in the hotel or catering sector , in: Journal "Mitteilungen der deutschen Patentanwälte " (Mitt.) 2003, 378 ff (382)
  6. ↑ BGH GRUR 2000, 1032 ff; BPatG GRUR 2000, 809 ff; BPatG GRUR 2000, 812 ff; BPatG GRUR 2001, 744 ff; BGH GRUR 2009, 780; BGH GRUR 2010, 1034
  7. ^ BPatG GRUR 2002, 745
  8. ↑ a b BPatG GRUR 2000, 809
  9. ↑ Karl-Heinz Fezer, Markenrecht, 2nd edition, Munich 1999, marginal number 29
  10. ↑ a b BPatG GRUR 2000, 811
  11. ↑ BGH GRUR 2001, 746

literature

  • Karl-Heinz Fezer, Trademark Law, 4th edition, Munich 2009
  • Adolf Baumbach, Wolfgang Hefermehl, Trademark Law, 12th edition, Munich 1985
  • Dietrich Scheffler, (Possible) trademark law conflicts in lease agreements, especially in the hotel or catering sector, in: Journal "Mitteilungen der Deutschen Patentanwälte" (Mitt.), Cologne, Berlin, Bonn, Munich 2002, p. 378 ff