Bad Faith Recognised as a Ground of Opposition

In a recent decision by the Registrar of Trade Marks in Zambia, it was confirmed that “bad faith” can be relied upon as a ground of opposition against a trade mark application.

The matter related to an opposition by Anhui Liangliang Electronic Technology Co Limited (“the Opponent”) against an application to register the mark TORCH in class 11 by Xu Benzhou (“the Trade Mark Applicant”).

The Trade Mark Applicant applied to register the mark TORCH in class 11 on 11 August 2015 and, following the provisional refusal of this application on the basis that the specification was too wide, it amended its specification to “energy saving lamp, lighting, fans, all being goods in class 11.” The amendment was filed on 14 December 2015 and the application was then accepted and advertised for opposition purposes on 25 April 2016.

In the meantime, the Opponent, had filed an application, on 11 December 2015, to register the mark CTORCH in class 11 covering “air vehicle with lighting equipment, bulb, lamp, lighting machinery and equipment, lantern, luminous tubes for lighting, fans, all being goods in class 11.” The Opponent’s trade mark application was rejected on the basis of the earlier application of the Trade Mark Applicant.

The Opponent accordingly opposed the Trade Mark Applicant’s TORCH trade mark application on the basis, inter alia, that it was filed in bad faith and was confusingly similar to the CTORCH mark of the Opponent, which it had used in Zambia, and which was a famous mark. The Trade Mark Applicant denied any similarity between the parties’ respective marks, and alleged that it had made use of its TORCH mark, albeit in Tanzania.

The Registrar found the marks in issue to be confusingly similar. Turning to the allegation of bad faith, however, this is not a ground of opposition expressly provided for under the local law. The Registrar stated that, since the Trade Marks Act does not specify grounds of opposition, any ground that negates an applicant’s right to registration of a mark may be raised. The Registrar considered various principles that apply to bad faith as a ground of opposition, including, whether or not the Trade Mark Applicant was aware of the Opponent’s rights, and whether its behaviour was inconsistent with the norms of reasonable, honest and fair commercial behaviour.

In this particular case, the Opponent had put up evidence of its use of the CTORCH mark in Zambia and alleged that the Trade Mark Applicant applied to register the mark TORCH in bad faith, to prevent the Opponent from registering its well-known mark in Zambia. The Trade Mark Applicant failed to address this ground of opposition in its defence. As such, the Registrar held that where an Opponent establishes a prima facie case of bad faith, its opposition will succeed. The facts in this case suggested that the Trade Mark Applicant had no bona fide intention to use the mark TORCH in Zambia other than as a blocking strategy, to obtain financial gain from the Opponent, which had already entered the local market and used its CTORCH mark in Zambia. The opposition, therefore, succeeded.

Nicole Smalberger
Nicole Smalberger
Senior Associate | Trade Mark Attorney