TRADEMARKS AND BAD FAITH REGISTRATION

OYELUDE SIMILOLUWA: ASSOCIATE: JOHNSON BRYANT

Introduction

The registration of a trademark in a certain jurisdiction confers protection and rights on the proprietor with respect to the use of the trademark. Every nation or jurisdiction also holds the obligation to protect registration and prevent trademarks piracy. There are several trademarks squatters in our jurisdiction today and efforts should be made to vacate the squatters.

Trademarks can be referred to as “brands names” used by manufacturers to identify their products[1] A trade mark can also be described as a recognizable sign, design, or expression which identifies products or services of a particular source from those of others[2]

The United States Patent and Trademarks Office defines a trademark as a ‘word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. A service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source[3] of a service rather than goods. Some examples include: brand names, slogans, and logos. The term “trademark” is often used in a general sense to refer to both trademarks and service marks 3’

The Trademarks Act 1965[4] defines a trademark as “… a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate a connection in the course of trade between the goods and some persons having the right either as proprietor or as a registered user to use the mark”.

Bad faith in Latin is called (mala fides); it is described as double mindedness or double heartedness in duplicity, fraud, or deception. It may involve intentional deceit of others, or self-deception[5]

Some examples of bad faith include: a company representative who negotiates with union workers while having no intent of compromising; a prosecutor who argues a legal position that he knows to be false; an insurer who uses language and reasoning which are deliberately misleading in order to deny a claim[6]

In French, bad faith is referred to asmauvaisefoi) Jean-Paul Sartre defined bad faith in his book Being and Nothingness as hiding the truth from oneself[7]

Bad faith in law is also similarly defined in Duhaime online law dictionary as “intent to deceive”, and “a person who intentionally tries to deceive or mislead another in order to gain some advantage”[8]

BAD FAITH TRADEMARKS

Bad Faith trademarks registration/applications are encountered in several jurisdictions. Bad faith registration may occur where an applicant applies for a trademark knowingly or expected to know that the trademark genuinely belongs to another person and has the intention of hijacking the trademark [9]

Bad Faith registration can also be referred to as trademark squatting and it is a situation when one party intentionally files a trademark application for a second party’s registered trademark in a country where the second party does not currently hold a trademark registration. The applicant takes advantage of the “first-to-file” trademark system (not to be confused with first-to-file patent systems) in that country. While the United States has a “use-based” trademark system where trademark rights are acquired by “priority of use,” most other countries around the world have a first-to-file system, awarding trademark rights to the first applicant. When bad-faith filers obtain registrations in a particular country, they are treated as legal trademark owners in that country. A bad-faith filer’s intent is usually to get the true trademark owner to purchase the trademark registration.

According to AIPPI[10] International Association for the Protection of Intellectual Property in its 2017 study question on bad faith trademarks it was stated that bad faith trademarks may arise in the following circumstances:

A trademark is used in one or more jurisdictions, but is not registered in other jurisdictions, and someone other than the trademark owner applies for an identical or confusingly similar trademark in a jurisdiction where the trademark is not registered. This might be done to prevent the trademark owner from entering the market, with the intention of selling the trademark application to the trademark owner when the owner attempts to enter that market, or simply wishing to profit from the trademark owner’s reputation. Such applications maybe rejected as “bad faith” applications.

The refiling of a very similar or identical trademark by a trademark owner, or the filing of a so-called “defensive trademark”, can arguably also amount to bad faith (in the sense that such marks are not used, or not genuinely used, but nonetheless obstruct the use and/or registration of a third party trademark)

“Bad faith” may also arise in other situations, e.g. if an applicant has no intention to use the mark applied for, or not for all goods/services at issue; or if an application is contrary to contractual obligations.

The common denominator seems to be that bad faith involves some kind of dishonest, abusive or unseemly behaviour by a trademark applicant. In some jurisdictions, the term “fraud” may also be used to denote such behaviour.

Bad faith occurs where one intentionally selects a trademark and decides to trade off the goodwill associated with another’s proprietor’s mark[11].

The essential function of a trademark is to exclusively identify the commercial source or origin of and to permit a proprietor to acquire an exclusive right to use, share, and license or assign the trademark. Bad faith is the mental state characterized by an intent to deceive consumers by using a competitor’s trademark or one that is confusingly similar to it.

INTERNATIONAL PERSPECTIVE/TREATIES

The increasing internationalization and globalization of international trade has made it important to improve the protection for Trade Marks and therefore the question of “bad faith” is of great importance. The countries which have subsequently ratified the Paris Convention for the Protection of Industrial Property[12] and/or the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)[13] have undertaken to observe that no time limit shall be fixed for requesting the cancellation or the prohibition of use of marks registered or used in bad faith

While the Paris Convention does not specifically contain a “bad faith” clause Article 6bis of the Paris Convention reads in full:

The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a Trade Mark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention an d used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well known mark or an imitation liable to create confusion therewith.

A period of at least five years from the date of registration shall be allowed for requesting the cancellation of such a mark. The countries of the Union may provide for a period within which the prohibition of use must be requested.

No time limit shall be fixed for requesting the cancellation or the prohibition of use of marks registered or used in bad faith. Article 6bis of the Paris Convention is directly referred to in Article 16 of the TRIPS Agreement.

However, a lack of definition for the term “bad faith “in both the Paris Convention and the TRIPS Agreement has resulted in various interpretations, causing variation from jurisdiction to jurisdiction[14].

Article 16 (2) of the Tripps Agreement states that Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis to services. In determining whether a trademark is well-known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark.

However, Article 16 (3) of the Tripps Agreement went further by providing for Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use.

The importance of Section 16(2) and Section 16(3) is that it will be very strenuous for an applicant who intentionally decides to register a well-known mark in a particular class as the well-known mark is registered. It will also be extremely difficult for an applicant to intentionally apply for the registration of a well-known mark on dissimilar class /goods or services.

I will state that the Tripp’s agreement has gone a step further with this provision as opposed to the Paris convention which only provides protection for similar goods/services.

Conclusively whilst Article 6 bis of the Paris Convention, requires member countries to protect a well –known mark even if the mark is not registered or used in that country. However protection for well –known, unregistered marks under the Paris convention is usually limited to goods and services that are identical or similar to those goods or services for which the trademark is known as in situations where use is likely to cause confusion. Under the Tripp’s agreement, protection may be extended to different goods or services if the use suggest a connection to the owner of a well – known registered mark, if the owner is likely to be damaged by such use. Therefore if a trademark is not used in a particular jurisdiction but its owner can establish that the mark is famous or well-known elsewhere in the world, the owner can prevent a third party from using or registering the mark in the particular.

The Community Trademark Regulation council Regulation 40/94 (1993) and Regulation 3288/94 (1994) it is stated that a ground for refusal of a trademark will be if the application is identical or similar to an earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where the earlier mark has a reputation and where that mark would suffer unfair advantage or detriments in respect of its distinctive character or its repute.

NATIONAL PERSPECTIVES/LAWS

Because of the differences in the treatment of bad faith between jurisdictions and the variability of the criteria for a finding of bad faith, there is a lack of predictability regarding what constitutes bad faith. This means both trademark owners and applicants for registration may need to take different approaches in different jurisdictions.[15]

AUSTRALIA

One of the grounds for opposition under Article 62A of the Trademarks Act 1995 is bad faith.

It provides: “business people who identify a trade mark overseas which has no marketpenetration in Australia, and then register that trade mark with no intention touse it in the Australian market and for the express purpose of selling the markto the overseas owner.”[16]

Chris Round in K& L GATES IP LAW WATCH recently stated that “Australia gave a decision in favour of the pop star Madonna who challenged an applicant seeking to register the trademark HARD CANDY which was the name of Madonna’s gym business. In Hard Candy Fitness, LLC v Hard Candy (Australia) Pty Ltd [2015] ATMO 61, IP Australia had no [17]strain in finding that Hard Candy (Australia) Pty Ltd (AU Hard Candy) was acting in bad faith when it filed a trademark application for HARD CANDY in the week Madonna launched her new gym business under that name.

IP Australia found that the opponent (US Hard Candy) is a global luxury fitness brand and owner of a group of fitness, health and lifestyle centres on the world operating under the name HARD CANDY FITNESS. US Hard Candy was founded by American musician, entertainer, actress, author, cultural icon and entrepreneur Madonna in partnership with Madonna’s agent, Guy Oseary, and Mark Mastrov of New Evolution Ventures, LLC.

On 25 October 2010, US Hard Candy stated that it was intending to launch a gym business named after Madonna’s 11th studio album Hard Candy. Six-days later the opposed mark was filed. AU Hard Candy was owned and connected to a number of companies owned ultimately by Antonio Dattilo. MrDattilo was also the owner of companies, trusts, domain names, Twitter handles and other social media accounts that all had an apparent connection to Madonna. None of them were found to be related to Madonna in any way.

In 2006 the Australian Trade Marks Act was modified to include a ground of opposition based on bad faith. The section simply read “The registration of a trademark may be opposed on the ground that the application was made in bad faith.” Examples that were given of bad faith applications included:

A person who monitors new property developments; registers the name of the new property development as a trademark for a number of services; and then threatens the property developer with trademark infringement unless they licence or buy the trademark;

A pattern of registering trademarks that are deliberate misspellings of other registered trademarks; and

Business people who identify a trademark overseas which has no market penetration in Australia, and then register that trademark with no intention to use it in the Australian market and for the express purpose of selling the mark to the overseas owner.

The third example was apposite to AU Hard Candy’s actions. IP Australia was shown numerous examples where Mr. Dattilo had named businesses after international brands such as G-Star and the Italian brand IsottaFraschini. There were also the examples of misappropriation of Madonna’s name. The denials by AU Hard Candy’s Counsel that the application was filed in bad faith were not believed by the hearings officer.

IP Australia found that the HARD CANDY trademark was filed in bad faith by AU Hard Candy and refused registration. Shortly after AU Hard Candy was placed into administration by MrDattilo[18]

 

JAPAN

In Japan the principal provisions on bad faith filings is contained in Article 3(1),Article 4(i)(vii), Article 4(i)(viii), Article 4(i)(x) Article 4(i)(xv), Article 4(i)(xix), Article 53 bis, Article 4(i)(xix),[19]

AIIPI stated that the term “bad faith” is not as such included in the relevant statutory provisions, but there are several provisions that seem to cover similar situations to cover bad faith.

Article 4(1)(xix) Japanese Trademark Act, provides that a trademark shall not be registered, if it … is identical with, or similar to, a trademark which is well-known amongconsumers in Japan or abroad … if such trademark is used for unfairpurposes … This Article can for example be invoked if an application is filed solely for the purpose of preventing the trademark owner of the well-known mark from entering the Japanese market, or for the purpose of making the trademark owner pay a significant amount of money. Also Article 4(1) (vii) can be invoked, namely if an applicant intends to misappropriate a trademark of a prior user.[20]

 

CHINA

China follows the ‘first to file’ rule, the company that first files a trade mark application in China owns the rights over the trade mark. Many foreign companies who come to do business in China, discover that their trademarks have been approved to a Chinese company.

Therefore, many European countries face challenges in China in relation to bad faith filings /trademarks. Chinese companies registering foreign trademarks with the intention of selling the trademark back to the proprietor. This prior registration can hinders the companies from entering the market or even sourcing for goods in the market. [21]

An example might be a situation where a foreign company uses a Chinese company to manufacture goods for export. The Chinese company will thereafter register the foreign company’s trademark in china and thereafter involve the Chinese custom official to intercept any of the foreign company goods going out for export.[22]

In China, there is an officially approved internet-based platform for selling trademarks, a so-called ‘trade mark supermarket’ (http://www.gbicom.cn/)[23]

Therefore what happens to a foreign proprietor of trademark who finds his trademark on this platform, especially a trademark that was stolen from its proprietor?

Under the Trademark Law of China, if any of the trade marks on the mentioned website are found to be sold in violation of the law, action can be taken to have those trademarks cancelled. Obtaining evidence will provide grounds for invalidating bad faith trademarks[24].

It may be inferred that China is one of the jurisdictions that practices first to file rule and in our opinion, except legal mechanisms are created and practiced that will protect proprietors, the first to file rule will encourage bad faith trademarks/hijacking

However, according to the report on bad faith trademarks filing in China, applicants while filing should consider filing the trademarks in class 18 & 25 ,(defensive filings ) and also consider challenging bad faith filings in china [25] by filing oppositions if the hijacked trademark has not been granted .

In the event that the trademark has been accepted, the foreign company may file on grounds of invalidation, nonuse cancellation. While filing grounds for opposition specific terms/areas of the Trademarks Law must be cited such as: Article 44, Article 10.1.8, Article 32, Article 15&Article 13[26]

In 2009 there was a major trade mark infringement case in China where an EU company was sued for RMB 40 million (about EUR 4.5 million) compensation. The EU Company had been using the same trade mark name worldwide which it tried to register in China in 2003, but found that a Shenzhen based company already owned this trade mark. An application for cancellation of the Chinese trade mark based on non-use failed because the Shenzhen Company had used the trade mark and had stores in Shenzhen with similar products. So the EU Company had to take the decision to rebrand – meaning that it abandoned use of the brand on its products worldwide, and introduced a totally new trade mark. The cost to register is often cited as a reason for not registering IPR in China or for not registering in additional trade mark classes. However, in our experience, far from saving money, such a strategy has time and again proven to be more costly. The issue is not limited to European companies but is also an issue domestically. For example, Harbin ‘Zheng Yang He’ Soy Sauce saved RMB 1,000 on official fees plus some additional trade mark agent fees by not registering its trade mark, only to lose RMB 500,000 to buy it back later.[27]

UNITED STATES OF AMERICA

Bad Faith occurs when one intentionally selects a mark to trade by the goodwill associated with another person’s trademark[28]

Unlike fraud, bad faith is not an independent basis for seeking to oppose/cancel another’s application/registration. Evidence of bad faith, however, may support a finding that confusion is likely and that the Applicant therefore should not be able to register or use the applied mark[29].

 

The Honourable Karen S Kuhlke stated types of bad faith filings to include

“Land rush” behavior, i.e., attempting to register another’s mark for the same goods before the true owner has entered the market. No intention to use, just to extort money from owner ,Registering another’s mark for same or similar goods and making token use of the mark,Registering and using another’s mark for related or unrelated goods[30]

In the US, bad faith is generally deemed to occur where one intentionally selects a mark to trade off the goodwill associated with another’s mark. It is a relevant factor when assessing likelihood of confusion and can be established through direct and/or circumstantial evidence of knowledge of the prior mark owner’s rights and an intent to trade off those rights[31]

 

Recent cases of Bad faith filings recorded in the jurisdiction includes the cases: L’ Oreal S.A v Marcon[32], Carr v Garnes,[33] And PetroleosMexicanos (Pemex) v Intermix S.A [34]

EUROPEAN UNION

Bad faith can be considered to mean “dishonesty which would fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area being examined.[35] It can imply or involve, but it is not limited to, actual or constructive fraud, or a design to mislead or deceive another, or any other sinister motive”[36]

 

Article 52(1) (b) EUTMR states the provision and necessary conditions on bad faith filing The EUTMR reflects bad faith only as an absolute ground for the invalidity of a EUTM. The relevant time for determining a bad faith registration is at the time for filing an application for the registration. Factors likely considered includes: identity /confusingly similarity of the marks, knowledge of the use of an identical or confusingly similar signs, dishonest intention on the part of EUTM owner[37]

In recent trademarks Case examples of bad faith filings May 21st 2017, Balbcare v Balbcare:

The Invalidity applicant is the owner of the Brazilian TM BALBCARE for nail care products in Class 3. It exported its products to the EU since 2011. In 2011 it signed a distribution agreement in the EU with the (future) EUTM proprietor, who applied for a FR mark BALBCARE in July 2011 and a EUTM in 2014.

By late 2011, the distribution agreement was suspended. The owner of the Brazilian TM requested the invalidity of the EUTM because it was registered in bad faith. The

Cancellation Division declared that the invalidity applicant cannot be expected to prove a negative fact, such as the absence of consent. A mere statement that the filing was made without its consent is generally sufficient. It is the EUTM proprietor who has to prove that the filing was authorized. The finding of bad faith does not require a contractual relationship at the time of filing. A direct or indirect relationship between the parties prior to the filing may be enough. The Cancellation Division declared the mark invalid. No appeal was filed.[38]

NIGERIA

Nigeria also follows the first to file rule like China. There are several circumstances where foreign trademarks have been hijacked in the Jurisdiction.

However the Trademarks Act has provision laid down which if construed and interpreted properly a foreign proprietor who finds his trademark hijacked may be able to obtain the cancellation of such marks.

Section 11 of the Trademarks Act[39] states that; “it shall not be lawful to register as a trademark or part of a trademark_

“any matter , the use of which would by reason of its being likely to deceive or cause confusion or otherwise be disentitled to protection in court of justice or be contrary to law or morality” ;

Section 13 (1)[40] of the Trade Marks Act also states that: “Subject to the provision of subsection (2), no trademark shall be registered in respect of any goods or description of goods that is identical with a trademark belonging to a different proprietor and already on the register in respect of the same goods or that so nearly resembles such a trademark as to be likely to deceive or cause confusion

By the provisions of Section 11 and 13[41] of the Trade Marks Act, the question to be probed will be, “an examiner in Nigeria suo moto decline to accept a trademark on the ground that the trademark is similar to a well-known mark”?

Can an applicant file an opposition relying on Section 11 and 13 of the TMA?

Does the provision of Section 32 of the TMA water down the extent of international treaties on protection of well-known marks.

By the provision of Section 11 of the Trademarks Act an examiner ought to decline an application which is likely to deceive the public or cause confusion. A situation where a well-known mark is hijacked in Nigeria, an examiner may decline registration of the mark on ground of the provision of Section 11 & 13 of the Trade Marks Act[42] .

A foreign company should also be able to rely on the provision of section 11 only if going by the provision of Section 13(1) the goods are identical and such foreign company has its trademarks registered it is important to bear in mind “ the clause “ALREADY on the register” .

In our opinion, the foreign company may however, rely on the provisions of Section 11 (a) .Section 32(1) of the Trademarks Act[43] provides that if a trademark in regard to familiar goods consists of an invented word and has become so well-known that its use in relation to other goods would be likely to cause confusion, it may be registered in respect of those goods as a defensive trademark. Familiar goods can be described as goods for which the trademark is registered and in relation to which it has been used.

Section 32 (2) provides that instead of an existing registration, the registered proprietor of a trademark:

<![if !supportLists]>a. may apply for its registration in respect of any goods as a defensive trademark , despite its registration in his name regarding those goods other than those for which a defensive trademark is being applied for ,

<![if !supportLists]>b. may apply for its registration in respect of any goods other than those for which a defensive mark is being applied for despite its registration in his name for those goods

The impact of Section 32 of the TMA is that the proprietor of a well-known mark should do a defensive registration in Nigeria to ensure protection of its trademark.

What therefore will be the fate of a foreign proprietor whose trademark is well known in Nigeria but only registered in the relevant class related to its goods/products?

Obviously the foreign proprietor may not be able to obtain an annulment of the registration /hijacking of the trademark by an applicant who makes use of the trademark in an unrelated class.

Nigeria is a signatory to both the Paris Convention and the Tripp’s Agreement. Article 6bis indulges a member country to refuse or cancel the registration and to prohibit the use of a trademark that is liable to create confusion with another trademark already well –known in the member country. whilst the Article 16 (3) of the Tripp’s Agreement went further by providing for Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use.

Section 12 (1) of the 1999 constitution as amended [44] states that no treaties shall be binding unless it has force of law and has been domesticated by the National Assembly;

This means that any treaty has to be municipalized and become a part of Nigerian law, as it is today, the provisions of the Paris Convention and Tripp’s Agreement are only persuasive as the treaties have not been domesticated in the Jurisdiction.

It is unfortunate that the Paris Convention and Tripp’s Agreement have not been domesticated and as such the law has failed to progress as the law does not recognize the principle of national treatment, substantive standard protection, protection of well-known marks.

It may however be argued that pursuant to the provision of Section 11 of the TMA, an application that would likely deceive or confuse the public should be disentitled to protection.

Judicial attitude towards the protection against trademark hijackers is somewhat different.

In Exxon v Exxon[45] Nominees

Belgore CJ accepted that the name Exxon is unique, invented by the plaintiff and that name and logo are registered in Nigeria. After referring to the dictum of Romer in Rodgers and Sons v Rodgers & Company “that no man is entitled to describe or mark his goods so as to represent that the goods are the goods of another. The CJ as he then was said that “This is truer in this country where imitation of foreign things or names is the vogue, but the tribute the mediocre can pay to the genius by imitation has a limit. It does not extend to the boundary of injuring the name, the reputation or the business of the genius; not at least when the genius has protected himself by the provisions of the Law.

Also in Procter & Gamble Co v G.S & D. Ind Ltd [46] , Per Ogunwunmiju, J.C.A stated on Need for Nigerian courts ,to protect Well known trademarks –

Appellant’s counsel argued that Nigeria as a treaty member of the World Trade Organization (WTO) has, by reason of its membership, agreed to shape its domestic laws and policies in a manner consistent with ‘Agreement on Trade Related Aspects of Intellectual Property Rights’ (Trips Agreement 1994). As such, there is a presumption of a national will to align with the provisions of the agreement. Section 2 of the Agreement which deals with trademarks, counsel reinforced, and requires in general terms that member countries protect well-known marks. Without being able to confirm executive or legislative ratification of this Trip agreement as binding on Nigeria, it is difficult to interpret the law in that record. However, the jurisprudence that seems to run through our case law in Nigeria has favoured liberalism in interpreting trademark Act to favour a proprietor of a named brand. I am persuaded by that approach. I feel that Nigerian courts must align with the comity of nations to protect well known trademarks. We must enforce the Trade marks laws and understand the raison d’etre of the laws which ensures protection of brand names from imitation and the like. The appellant’s trademark is not only well-known internationally, it has also been the subject of prior legal registration under the Trade Marks Act in Nigeria. I feel strongly that the Trade mark Ariel associated with the appellant should enjoy the protection of the courts.

The Trademarks Patents and Design Registry ought to identify and take action on bad faith filings.

In a recent decision MILKA EXTRA &DEVICE in class 16 & 32. The TPDR [47]relying on the decisions in Ducros S.A v Silas Industries [48] , Societe Bic S.A v Chargin Industry Limited[49],Alhaji Mt Elebute v DrOlugbengaOgunkha[50] failed to identify a bad faith filing on the basis that the opponent did not have a certificate of registration in class 16 & 32 the opposition department of the TDPR stated that a certificate of registration in one class will not protect an opponent in another class of goods/services and the opponent ought to protect its trademark by utilizing the provision of section 32 which states that a proprietor of a well-known mark should register its trademarks in classes it considers important.

This type of judgments should be discouraged as popular names /franchise an example the series by HBO “GAME OF THRONE” may be registered by anybody in any class so far it is not registered in the relevant class 41

Conclusion

We have looked at the meaning of Bad Faith registration and how it obtains in different jurisdictions, we have also taken a succinct look at Nigeria and the problems faced in the jurisdiction with regards to the non-domestication of international treaties and the first to file rule

A domestication of the international treaties signed by law should be encouraged in Nigeria.

Pending the fight for domestication, the Trademarks Patent and Designs Registry should identify bad faith filings during examination / application for registration and opposition proceedings and work on vacating trademarks squatters.

We may also borrow from practices of The National Industrials Court who are enjoined to follow best international practices with regards to labor matters. This attitude may also be adopted in the field of Intellectual property.



[1]IIC Studies in Industrial Property Law and Copy right Law .Vol 21 F. Shyllon, Intellectual Property Law in Nigeria what page?

[2]https://en.wikipedia.org/wiki/Trademark (last accessed on the 14th of July 2017) insert a more recent date

[3] https://www.uspto.gov/trademarks-getting-started/trademark-basics/trademark-patent-or-copyright(last accessed on the 14th of July 2017) (last accessed on the 14th of July 2017)

[4] Section 67 Trade Marks Act CAP T13 LFN 2004

[5] https://en.wikipedia.org/wiki/Bad_faith(last accessed on the 14th of July 2017)

[6]Ibid

[7]https://en.wikipedia.org/wiki/Bad_faith(last accessed on the 14th of July 2017)check for the citation of the book

[8]ibid

[9]IsikOzdogan & MerveAltinay, Fighting Bad Faith in Turkey, INTA Bulletin Vol 72 No 11 page 112

[10] AIIPI study guidelines on bad faith registration 2017

[11]http://www.visiond.com/IPO2013/MATERIALS/AwdehDanny_slides.pdf (last accessed 14th July 2017) this article should have a title

[12] The Paris Convention, adopted in 1883, applies to industrial property in the widest sense, including patents, trademarks, industrial designs, utility models, service marks, trade names, geographical indications and the repression of unfair competition. This international agreement was the first major step taken to help creators ensure that their intellectual works were protected in other countries.( http://www.wipo.int/treaties/en/ip/paris/)last accessed on the 17th of July 2017

[13] An international legal agreement between all the member nations of the World Trade Organization (WTO). It sets down minimum standards for the regulation by national governments of many forms of intellectual property (IP) as applied to nationals of other WTO member nations.[] TRIPS was negotiated at the end of the Uruguay Round of the General Agreement on Tariffs and Trade (GATT) in 1994 and is administered by the WTO.(the Trips Agreement ) https://en.wikipedia.org/wiki/TRIPS_Agreement last accessed on the 17th of July 2017

[15]AIIPI study guidelines on bad faith registration 2017

[16] ibid

 

[18]CHRIS ROUND, K&L GATES IP LAW WATCH , https://www.iplawwatch.com/2016/01/bad-faith-trademark-applications/ (last accessed on the 17th of July 2017)

[20] AIIPI study guidelines on bad faith registration 2017

[21]Helika Jurgenson, Bad Faith Trade Mark Registrations in China http://www.youripinsider.eu/bad-faith-trade-mark-registrations-china/ (d on the 17th of July 2017)

[22]Helika Jurgenson, Bad Faith Trade Mark Registrations in China http://www.youripinsider.eu/bad-faith-trade-mark-registrations-china/

[23]Helika Jurgenson, Bad Faith Trade Mark Registrations in China http://www.youripinsider.eu/bad-faith-trade-mark-registrations-china/

[24]Helika Jurgenson, Bad Faith Trade Mark Registrations in China http://www.youripinsider.eu/bad-faith-trade-mark-registrations-china/

[25] Report by the Intellectual Property Office, British Embassy Beijing ,Department for international trade &Chinese –Britain British Council

[26] Article 44 deals with application made through improper means ,Article 32 deals with protection for unregistered marks and other rights with certain influence , Article 15 deals with foreign proprietors’ who had contracts or prior relationships with the agent who hijacked the mark Article 13 deals with Well-known mark status (which remains very difficult to obtain.

[28]J.ThomasMcarthy,Mcarthy on Trademarks & Unfair Competition 23:116 4th edition 2012

[29]Danny M. Awdeh Finnegan, Henderson, Farabow, Garrett & Dunner, LLP ,ad Faith Trade Mark Filings An International Perspective ,Report compiled by: Dr. Elizabeth Houlihan of Houlihan Vice Chair of the International Trade Marks Committee,http://www.ipo.org/wp-content/uploads/2013/11/badfaithfilings.pdf(last accessed 17th July 2017

[30] The United States Trademark and patent Office ,fighting bad faith trademarks filing in the United States of America https://www.jpo.go.jp/torikumi_e/kokusai_e/pdf/bad_faith_seminar1/01.pdf

[31] AIIPI study guidelines on bad faith registration 201

[32] 102 USPQ2d 1434 (TTAB 2012).

[33] Opposition No. 91171220, 2010 WL 4780321 (TTAB Nov. 8, 2010

[34] 97 USPQ2d 1403 (TTAB 2010). )

[35]Bad faith case study (Final version) OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) Alicante, 31 January 2003 HOM/02/08 ,definition for bad faith was used in United Kingdom (GromaxPlasticulture Ltd vs Don & Low Nonwovens Ltd, 1999 RPC 367) http://euipo.europa.eu/en/enlargement/pdf/badfaithCS3101.pdf

[36]Bad faith case study (Final version) OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) Alicante, 31 January 2003 HOM/02/08 definition was used by the Cancellation Division of OHIM in the invalidity case NO C000479899/1 “BE

NATURAL”. http://euipo.europa.eu/en/enlargement/pdf/badfaithCS3101.pdf

[37]Guidelines for the examination of EEuropean Trademarks , Eurpoean Union Inteellectual Property Office ,Part D,Cancellation ,Section 2,Substantive Provisions https://euipo.europa.eu/tunnelweb/secure/webdav/guest/document_library/contentPdfs/law_and_practice/trade_marks_practice_manual WP_LR_2016/Part-D/02 part_d_cancellation_section_2_substantive_provisions/part_d%20cancellation_section_2_substantive_provisions_en.pdf

[38]Case examples of bad faith filings May 21st 2017,cancellation division(EUIPO) first instance 9805C,2015/9/14, see also camomilav CAMOMILLA,(European Union),General Court of the European Union (ECG),Joint cases T-98/13 and T-99/13

[39]Trade Marks Act Cap T13 2004

[40] Ibid

[41] ibid

[42] ibid

[43] ibid

[44] CAP C223 LFN 2004

[45] IIC Studies In Industrial Property Law and Copy right Law .Vol 21 F. Shyllon ,Intellectual Property Law in Nigeria,pg278,

[46] NWLR 2013 PT 1336 @ 423

[47] Trade Marks, Patent and Designs Registry.

[48] 2003-2007 5.IPLR PG 27

[49] 1997 FHCLR P9 727

[50] 1990 FHCLR 201