Leiden University. The university to discover. Session 2 - Topic 1: Bad faith & Intent-to-Use EU-China workshop on new issues in trademark filings, Beijing, June 2011 Dr. Alexander Tsoutsanis

Leiden University. The university to discover. Topic 1  Is it possible to request proof of intent to use in China, if:  an applicant is registering for a wide variety of goods ('overbroad TM')  an applicant is registering for a large number of marks ('stockpiling')  an applicant is known to have acted in similar cases ('pattern of conduct') ?

Leiden University. The university to discover. Option 1 Impose full blown 'intent to use' requirement, in accordance with § 15-3 TRIPS, regardless of designated goods (US, India).

Leiden University. The university to discover. Option 2 Squeeze in lack of 'intent to use' as a factor for determining 'bad faith', in case of 'over wide' goods description (ECJ 2009 Goldhase; UK practice [2002>). Drawbacks: (a) not effective, as lack of 'intent to use' alone can not trigger 'bad faith' (ex ECJ) (b) slamming TM owner for lack of 'intent to use' during grace-period violates TRIPS

Leiden University. The university to discover. EU: background  1984: EU adopts 'bona fide intent to use' in draft CTMR  1987: EU drops 'intent-to-use'. Instead opts for 'bad faith'.  1988 TMD / 1993 CTMR: only contain 'soft' genuine use requirement: 5 year 'grace period' + (afterwards) allowing revocation for lack of genuine use.

Leiden University. The university to discover. EU - bad faith & 'intent-to-use' United Kingdom (≈ Ireland) -1994: legislator maintained 'intent-to- use' requirement in violation of directive (s 32(3) TMA) : High Court Decon : High Court Knoll AG's Trade Mark: of 'questionable validity' : Practice change: only applied in rare cases of over-wide specifications of goods and services.

Leiden University. The university to discover. EU - bad faith & 'intent-to-use' -Other EU Countries: reject UK practice OHIM CD Trillium: -rejects UK approach -but still allows invalidity on the basis of bad faith, if goods ‘do not have the slightest connection with his actual economic activity and where it might even appear unimaginable that said applicant would ever be able to expand’

Leiden University. The university to discover. EU - bad faith & 'intent-to-use' -2009: ECJ Goldhase: mentions lack of 'intent-to-use' as example of bad faith intention: -"(…) the intention to prevent a third party from marketing a product may, in certain circumstances, be an element of bad faith on the part of the applicant."

Leiden University. The university to discover. -"That is in particular the case when it becomes apparent, subsequently, that the applicant applied for registration of a sign as a Community trade mark without intending to use it, his sole objective being to prevent a third party from entering the market."

Leiden University. The university to discover. Option 3 Consider viable alternatives to get rid of 'dead/sleeping/inactive' marks: -Only impose 'grace-period' of 3 years (instead of 5 years in EU). -Require 'proof-of-use' upon renewal. -Don't follow OHIM-practice of allowing complete class headings to encompass all goods/services contained in such class.

Leiden University. The university to discover. -Adopt pay-per-class regime instead of EU practice of fixed-fee for three classes. -Develop liability doctrine for suing competitors within grace period, or -Only allow trade mark injunction in case of genuine use.

Leiden University. The university to discover. Conclusions 1.Yes, option 1 is possible. § 15-3 TRIPS does not bar China from imposing an 'intent-to-use' requirement. 2.Is it desirable? EU Study: acknowledges that Registry contains too much 'dead wood'. 4.But 2011 EU Study also proposes to maintain current EU system, in which 'intent-to-use' is not required and a mark can be revoked (only) after 5 years of lack of genuine use.

Leiden University. The university to discover. 5.Option 2: lack of 'intent-to-use' may point towards 'bad faith intent' of the TM applicant. 6.But not effective: lack of 'intent-to-use' alone is insufficient for bad faith, as other conditions (e.g. knowledge) should also be met. Also incompatible with TRIPS. 7.Option 3: consider (more suitable) alternatives !

Leiden University. The university to discover. Questions ? Thank you for your attention