ILTMO Update: Bad Faith Use Of A Mark Can Lead To Its Revocation
In a recent precedential decision, the ILTMO held that bad faith use of a trademark registration can lead to its revocation.
The decision involved a petition to revoke a trademark registration for a stylized logo design of the mark BMX for bicycles. When the trademark application was examined, the trademark owner conceded that BMX per se is a generic acronym which is extensively used for bicycles. Nevertheless, following the registration of the stylized BMX logo design, the trademark owner asserted the registration against third parties which used the acronym in different logo designs and attempted to monopolize the acronym itself independently of the registered logo. A bicycle importer petitioned to revoke the trademark registration but the parties settled prior to the hearing.
Although the matter was settled, the ILTMO noted that “sometimes the opportunity arises for this tribunal to assist fair competition and such opportunity should not be missed”. The ILTMO accordingly added a disclaimer to the trademark registration indicating that it does not confer any rights in the word mark itself. Most importantly, the ILTMO further held that post-registration use of the trademark in bad faith, such as asserting trademark rights beyond the scope of registration as represented during prosecution, can result in revocation of the registration. While the trademark was not revoked as the matter was settled, this is a precedential decision which will likely be invoked by defendants in future proceedings.
This update article is provided for general information only and is not in lieu of legal advice. Please contact us directly for any required advice on specific matters.