Innocent mistake in registration is still bad faith

A hearing officer at the UK Trademarks Registry has cancelled the registration of the mark SCIP-R-NOSCO on the grounds that it was made in bad faith because the registered owner of the mark did not exist. Despite the fact that this application error was an innocent mistake, the hearing officer held that the entity identified as the owner could not have had the necessary bona fide intention to use the mark at the time the application was filed.

The owner identified on the registration document was named as SCIP-r-NOSCO, which did not exist at the time of application. The registered owner should have been stated as North of Scotland Voluntary Organizations Training Forum (NOSCO). This entity was in the process of rectifying the registration, (which would entail no change of ownership since SCIP-r-NOSCO and NOSCO are the same organization), when a cancellation action was filed by an individual named Marion Cornick.

The mistake as to the name of the applicant was innocent. Even so, the hearing officer at the Trademarks Registry said that a mistake did not need intent to bring it within the class of bad faith that could lead to the refusal of a registration, following Royal Brunei Airlines Sdn Bhd v Tan [1995] 2 AC 378 (not a trademark case) and DEMON ALE Trademark [2000] RPC 355. The test for bad faith is objective: does the behaviour offend the accepted standards of honest conduct?

In the case of a trademark application, there is a requirement to state on the application form (Form TM3) either that (i) the mark has been used, or (ii) there is a bona fide intention on the part of the applicant to use the mark. Where the applicant does not exist, that intention cannot be bona fide and, therefore, the application must be deemed to have been made in bad faith. Accordingly, the hearing officer cancelled the SCIP-R-NOSCO mark pursuant to Section 3(6) of the Trademarks Act 1994.

Larry J Cohen, McDermott Will & Emery, London