2018-08-30
A trademark is a distinctive symbol, logo, or mark that a company uses for promotion, or as a means for customers to identify the source of its products. A registered trademark is an intellectual property that can have immense value for a company. An example of this is the classic Adidas three stripes logo which is widely known and allows the public to identify an Adidas product even if it doesn’t mention the Adidas name anywhere on the product. The same is applicable to other celebrated logos, including logos owned by Pepsi and Starbucks. Because these logos are popular and celebrated, there have been instances where smaller players or new entrants have attempted to ride the popularity of the original brand to earn quick profits based on a misleading trademark that they created. Trademark lawyers and agents can discuss the problems associated with trying to pass off your own product as someone elses.
An Understanding of ‘Bad Faith’
Confusion is one ground for an owner of an existing trademark to oppose the registration of a trademark by a third-party. The reason for this opposition is that the mark applied for registration is too similar to that of the original trademark that its owner is trying to protect. Sometimes, the use of a confusing trademark is done in 'bad faith' by a rival that deals in similar products or services. When 'bad faith' use occurs, the use of the trademark is done with full knowledge of the other existing trademark and in an attempt to confuse and steal clients. What happens as a result of these similarities is that it is highly likely for the consumers to be deceived into thinking that the products or services with the newer trademark actually belongs to the owner of the original trademark.
In some cases this can also be applicable even if the two companies don’t deal with the same products. For instance, it is not in the best interests of the company Mercedes to allow another entity operating as ‘Mercedes Bikes’ or ‘Mercedes Televisions’ etc. as that would dilute the value of the trademark ‘Mercedes’. However, if there is no likelihood of confusion when used in different industries, the likelihood of successfully opposing a trademark is low.
An Example of ‘Bad Faith’
A week after pop star Madonna launched her gym and fitness business under the title Hard Candy under the name Hard Candy Fitness, there was an attempt to file a trademark under the name 'Hard Candy Pty Ltd'. When this transpired, the courts had no problem rejecting the application filed by Hard Candy (AU), which was owned by Antonio Dattilo. The trademark application was rejected as it was only filed as a result of an existing Madonna-owned trademark of the same name, implying that the trademark application was filed in bad faith.
The key takeaway here is that entities can and must defend their existing trademark against undue exploitation by an outside party under the Trade-marks Act. Not doing so can hamper your standing in the market. For a better understanding of the process and likelihood of success, a trademark lawyer or agent can be incredibly beneficial. If you are looking to protect your legal rights and commercial interests, feel free to contact our team.
