Registrar una marca es uno de los pasos más importantes para proteger los activos intangibles de cualquier empresa. El nombre, logotipo o signo distintivo con el que un producto o servicio se presenta ante el público, además de constituir su identidad comercial, puede convertirse en un valioso elemento estratégico. Sin embargo, el sistema de protección de marcas puede ser objeto de abusos. En este particular, podemos toparnos con un fenómenRegistering a trademark is one of the most important steps in protecting any company’s intangible assets. The name, logo or trademark with which a product or service is filed with the public, in addition to constituting its commercial identity, can become a valuable strategic element. However, the trademark protection system can be subject to abuse. In this regard, we may encounter an increasingly observed and questioned phenomenon: bad faith trademark registrations.
This concept describes situations in which a person or company applies to register a trademark not for the legitimate purpose of using it, but for unfair or harmful purposes to third parties. In this post, we explain what acting in bad faith really means in the field of trademark registration, how these cases are identified and what consequences they may have.
Trademarks registered in bad faith: what are they and how does the EUIPO identify them?
Although the term ‘bad faith’ is not precisely defined in Spanish law, it is covered by Law 17/2001 on Trademarks as a cause for declaring a trademark invalid. Essentially, bad faith is understood to exist when the applicant acts contrary to business ethics, good commercial practice or, directly, with a clear intention to cause harm.
Trademarks registered in bad faith are not used to identify genuine products or services, but as tools to block competitors, take advantage of other people’s trademarks or even speculate on their possible sale. Their existence jeopardises both market fairness and the rights of those who act in good faith. Therefore, it could also be understood as an act of unfair competition.
The European Union Intellectual Property Office (EUIPO) has developed specific criteria for assessing whether a trademark has been registered with malicious intent. Although each case must be analysed in its context, there are three key factors outlined by case law that may reveal dishonest behaviour:
- Misleading similarity. This occurs when the registered trademark is so similar to an existing one that it may cause confusion among consumers. This type of conduct suggests a clear intention to benefit from the recognition of others.
- Prior knowledge of the use of another trademark. In effect, if the applicant knew, or should have known, that the trademark they are registering was already being used by another company in the market, their application could be considered an act of bad faith.
- Deliberately unfair intent. This is probably the clearest indication. If we can prove that the applicant had no legitimate interest in using the trademark for their own products or services, but rather a motivation to harm another, we are dealing with a case of registered trademarks in bad faith.
Common causes leading to the cancellation of bad faith trademarks
When a fraudulent register is detected, the law provides for the possibility of declaring it null and void. Specifically, the most frequent situations of trademark cancellation in the cases we are dealing with include:
- Commercial speculation. Some registers are filed for the sole purpose of selling the trademark later to someone who really needs it, taking advantage of their situation.
- Exploiting the reputation of others. Also known as parasitic behaviour, this occurs when a trademark attempts to benefit from the notoriety and commercial value of another already established trademark.
- Blocking market entry. In fact, some trademarks are registered for the sole purpose of preventing a competing company from legally operating under its identity or trade name.
- Refilling or repeated registrations. This occurs when a proprietor artificially renews the life cycle of their trademark by filing new identical or very similar applications, especially to avoid penalties for non-use of the original trademark.
Other signs that may indicate bad faith trademarks
Apart from the factors already mentioned, the EUIPO points out other elements that help identify when a register may have been made in bad faith. These include:
- The circumstances surrounding the creation and filing of the trademark.
- The applicant’s previous behaviour and use of similar trademarks.
- The lack of commercial logic justifying the trademark application.
- The notoriety or distinctive character of the original trademark compared to the new attempt to register the trademark.
Pierre Cadault: a real case of a trademark registered in bad faith
Of course, one of the clearest ways to understand the impact that trademarks registered in bad faith can have is to look at real cases. A striking example is Decision No. C 64 100 of the European Union Intellectual Property Office (EUIPO), which analysed the registration of the trademark Pierre Cadault.
Who is Pierre Cadault? He is a fictional character from the popular series Emily in Paris, produced by Viacom. Despite having no connection to the series or its producer, a third party decided to register that name as a trademark to exploit its notoriety in the market. Specifically, the registration covered products such as clothing, sunglasses, perfumes and other fashion items. In other words, the type of merchandising that one might naturally associate with a brand linked to a successful television universe.
Viacom challenged the application and the EUIPO ruled in its favour: the applicant had acted in bad faith. The aim was not to launch an authentic product, but to take advantage of the character’s fame to obtain undue profits. The evidence was clear: Emily in Paris was already a media phenomenon in Europe before the application was filed. Of course, the name Pierre Cadault was already firmly associated with the character in the series.
This case reflects how trademarks registered in bad faith can cause confusion among consumers by leading them to believe that certain products are linked to well-known brands, when in fact they are not. It also illustrates how attempts are made to obtain economic gain from the reputation of others, without having contributed in any way to its construction.
Beyond this specific example, bad faith registers pose a constant threat to legitimate trademark owners. From attempts to block trade to appropriating the prestige of another’s trademark, these practices distort the market and undermine the rights of those who act transparently.
Hence, the EUIPO and European courts have dealt with numerous similar cases. For example, situations in which an applicant seeks to pre-empt another company in the registering of a well-known trademark. Or, in which trademarks with minimal variations of famous names are filed with the intention of confusing consumers and capturing some of their attention. All of this is part of the broad universe of bad faith trademark registrations, a phenomenon as subtle in appearance as it is harmful in practice.
How can damage from bad faith trademarks be prevented?
Avoiding being affected by this type of unfair registration requires a proactive attitude on the part of companies. Here are some essential recommendations for protecting your trademarks:
- Monitor the market constantly. In this regard, conducting regular trademark audits can help you detect suspicious registrations or attempts at misappropriation.
- Register your trademark in related classes. Do not limit yourself to protecting your trademark in the category where you currently use it. Also register it in sectors with potential for expansion (such as technology, entertainment, or e-commerce) to prevent others from getting ahead of you.
- Ensure the actual use of your trademark. In reality, one of the most effective strategies against potential disputes is to demonstrate that you are actively using the trademark. Keep evidence such as advertising campaigns, product invoices, packaging or trade show appearances.
- Act quickly on suspicious registrations. If you detect an attempt to register a trademark that takes advantage of your reputation, initiate the opposition or invalidation process as soon as possible. Time is undoubtedly of the essence in preventing the fraudulent trademark from gaining legal validity.
- Protect your online reputation. Today more than ever, trademarks are exposed across multiple digital channels. It is advisable to have monitoring tools in place to detect misuse on social media, web domains or e-commerce platforms.
Protect your trademark against bad faith registrations with the support of ISERN
At ISERN, we have been dedicated to protecting intangible assets such as trademarks, patents, intellectual property and designations of origin. Our team manages to register your trademark and actively monitors any attempts at misuse by third parties.
Likewise, through a system of constant monitoring, we detect signs of risk and act quickly to prevent bad faith registers from affecting your business. We carry out periodic audits of your trademark, review and strengthen your trademark portfolio, and anticipate possible infringements through strategic registers.
As if that were not enough, we provide services both nationally and internationally.