Case No. EWHC-1798-(IPEC)

GmbH v Sun Mark Ltd and Sea Air & Land Forwarding Ltd (‘Red Bull’) [2012] EWHC 1929 (Ch) per Jacob LJ at [130]-[138]. In brief, those principles (excluding internal references and extraneous material) are:(i)the relevant date for assessing whether an application to register a trade mark was made in bad faith is the application date;(ii)while the relevant date is the application date, later evidence is relevant if it casts light backwards on the position as at the application date;(iii)a person is presumed to have acted in good faith unless the contrary is proved. An allegation of bad faith is a serious allegation which must be distinctly proved. The standard of proof is on the balance of probabilities but cogent evidence is required due to the seriousness of the allegation. It is not enough to prove facts which are also consistent with good faith;(iv)bad faith includes not only dishonesty, but also “some dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area being examined”;(v)section 3(6) of the 1994 Act is intended to prevent abuse of the trade mark system. There are two main classes of abuse. The first concerns abuse vis-à-vis the relevant office, for example where the applicant knowingly supplies untrue or misleading information in support of his application; and the second concerns abuse vis-à-vis third parties;(vi)in order to determine whether the applicant acted in bad faith, the tribunal must make an overall assessment, taking into account all the factors relevant to the particular case;(vii)the tribunal must first ascertain what the defendant knew about the matters in question and then decide whether, in the light of that knowledge, the defendant’s conduct is dishonest (or otherwise falls short of the standards of acceptable commercial behaviour) judged by ordinary standards of honest people. The applicant’s own standards of honesty (or acceptable commercial behaviour) are irrelevant to the enquiry; and(viii)consideration must be given to the applicant’s intention.79.It was also agreed that, if the Court were to find that the Defendants had committed the tort of passing off through their use of ‘the Rubettes’, invalidity should follow.