Did you know that trade mark applications can be opposed on the ground that the application was made in “bad faith”? This is a vague sort of concept, with the test being that the decision to apply for the mark “would be regarded as in bad faith by persons adopting proper standards” – but you tend to know it when you see it.

Bad faith covers not only fraud and dishonesty, but also unscrupulous and underhanded conduct. The conduct is looked at both from the perspective of the trade mark applicant and objectively, hence the relevance of Robin Hood. He broke the law by stealing from the rich, although he believed he was doing good by giving to the poor. The “Robin Hood test” for bad faith means that someone “with low standards” cannot obtain trade mark registration when a person with reasonable standards cannot.

In Ceravolo Premium Wines Pty Ltd v MA Kirkby TRPL Pty Ltd [2018] ATMO 43 (29 March 2018) MA Kirkby applied for the trade mark OCHRE EARTH CHILD. MA Kirkby had been using the trade mark RED EARTH CHILD. That company received a letter of demand from Ceravolo claiming trade mark infringement by the use of RED EARTH CHILD. The parties negotiated and eventually Mr Kirby signed an undertaking that neither he nor his company would use RED EARTH CHILD again.

However, what Ceravolo did not know was that, during these negotiations, MA Kirkby filed an application for OCHRE EARTH CHILD (ochre being a reddish yellow). The Hearing Officer did not need to consider whether OCHRE EARTH CHILD and RED EARTH CHILD were deceptively similar. Rather MA Kirkby acted in bad faith because it knew that Ceravolo would have objected to use of a variant of RED EARTH CHILD but proceeded to make the trade mark application without telling Ceravolo. The application was refused.

Bad faith is a relatively new ground of trade mark opposition and its limits have not yet been fully tested. However, it may well exist when one party is trying to get an underhand advantage over the other party.