Bad Faith, Public Policy and Morality: How Open Concepts Shape Trade Mark Protection

Abstract

The grounds for refusal or invalidity relating to trade marks filed in bad faith or being contrary to public policy or accepted principles of morality are based entirely on undefined concepts and require a value judgement to be made by the adjudicating authorities. This openness has led to the exploration of new lanes for these grounds in case law beyond the traditional scope of their application. This paper examines how the flexibility of the concepts at hand has led to considerable uncertainty in assessing whether a particular mark is registered in bad faith or offends against morality and public policy – and in some cases both. In particular, the objective, consistent viewpoint of the average consumer, which is normally applied in other areas of trade mark law, appears to be exiled from the analysis in these cases. In the case of bad faith, the assessment involves a subjective element, as there is a mandatory requirement that there should be bad faith intent on the part of the applicant. The paper argues that much of the uncertainty as to when bad faith applies could be overcome by adopting an objective viewpoint in its assessment. By contrast, the assessment of the offence against morality remains objective. It is based on the perception of a model member of society with average thresholds of sensitivity and tolerance who does not always overlap with the average consumer of the goods covered by a trade mark application. Infringement of public policy is also objective and is linked with offence against the “top-down” rules laid down by the public authority.