1. Leiden University. The university to discover. Session 2 - Topic 2: Bad faith as a ground for refusal / opposition EU-China workshop on new issues in trademark filings, Beijing, 28-29 June 2011 Dr. Alexander Tsoutsanis

2. Leiden University. The university to discover. Topic 2  Is it possible to provide evidence of bad faith directly to each TMO prior to the publication stage?  prior to registration, bad faith can serve as a ground for:  refusal  opposition

3. Leiden University. The university to discover. Bottom line EU -Trade Mark Directive gives Member States complete freedom on preferred format between refusal, opposition, cancellation. -Key driver is speed and efficiency of proceedings in specific country. -If you have efficient cancellation proceedings (such as OHIM), no need for opposition or refusal.

4. Leiden University. The university to discover. Fraudulent applications -Tactic 1: Legitimize application by listing rightful trade mark proprietor as a secondary co-applicant, sometimes even by submitting a fake Power of Attorney. -Such fraudulent information is often not directly submitted to OHIM, but only submitted to obtain a national TM in e.g. Bulgaria or Romania, which is used to file IR designating European Community.

5. Leiden University. The university to discover. -Tactic 2: create fake entity under the same trade name as the rightful trade mark proprietor. -2005 New York Times revealed that a Russian ‘lawyer’ had registered the Starbucks brand in Russia in his own name.

6. Leiden University. The university to discover. 2000 OHIM CD Be Natural: -Bad faith also in case of lack of good faith on the part of the applicant towards the Office at the time of filing, e.g. where the applicant intentionally submits wrong or misleadingly insufficient information to the Office. -Added value? -Not recognized by ECJ 2009 Goldhase

7. Leiden University. The university to discover. Ex officio refusal -Increases workload for TMO's, with -limited effectiveness as nearly impossible to examine bad faith without input from injured right holder. -rare in EU countries

8. Leiden University. The university to discover. -2004: Germany introduced ex-office refusal, following highly publicized incidents of TM grabbing (e.g. Bach). -only in 'obvious' cases of bad faith. -what is 'obvious'? -1999: Latvia also restricted 'bad faith' assessment to 'obvious' cases.

9. Leiden University. The university to discover. Questions ? alexander.tsoutsanis@dlapiper.com Thank you for your attention