Supreme Court applies ‘subjective’ bad-faith test in cancellation action

Greece
The Greek Supreme Court has dismissed an action for the cancellation of the trademark LEONARD on the grounds that the petitioner had failed to prove that the application for the registration of the mark had been filed in bad faith (Case 244/2010).

Under Article 17(1)(e) of the Trademarks Act (2239/1994), “a trademark shall be cancelled if, among other things, it has been applied for in bad faith”. In the present case, the petitioner claimed that the applicant had acted in bad faith when applying for the registration of the word mark LEONARD for clothing in Class 25 of the Nice Classification. According to the petitioner, the applicant was aware, at the time of filing of the application (ie, March 3 1981), of the existence of the petitioner’s mark LEONARD'S SLYLED IN PARIS for garments. Therefore, the petitioner alleged that the applicant had sought to take unfair advantage of the reputation of the earlier mark.  
 
The Athens Court of Appeal rejected the action for the cancellation of the LEONARD mark on the grounds, among others, that the petitioner had failed to demonstrate use of its mark in Greece before the filing date of the application for the registration of LEONARD. In particular, the court noted that the sales invoices submitted by the petitioner post-dated the filing date of the application.
 
On appeal, the Supreme Court upheld the Court of Appeal's decision and dismissed the cancellation action. Based on the applicant’s registrations for the LEONARD mark in more than 18 major jurisdictions and the widespread distribution of LEONARD-branded products since 1957, the Supreme Court concluded that the applicant had no intention of taking unfair advantage of the reputation of the petitioner’s mark.
 
The decision confirms well-established case law: in cancellation proceedings based on bad faith, the petitioner must prove not only that the filing of the application created an unfair result in the course of trade and was contrary to established business practices (objective criterion), but also that the applicant was aware of, and intended to, bring about such an unfair result (subjective criterion). Interestingly, the standard for proving bad faith is lower in opposition proceedings, as the applicant’s intentions are irrelevant (ie, only the objective criterion must be met). 

Maria H Vasilikopoulou, Dontas Law Offices, Athens

Unlock unlimited access to all WTR content