Introduction

The crucial significance of bad faith in trademark cases has developed with a quantum leap in the last two decades.  Consequently, an interesting body of law has emerged around the element of bad faith.  In addition, the advent of digital technology has also contributed to the importance of bad faith because classical trademark pirates on the trademark registries and in the domain name space no longer have to attend international marketing shows or exhibitions. They can simply rely on a host of internet and website information to copy and pre-empt the owners of foreign marks.

Legal History and Definition of Bad Faith

Good faith (‘bona fides’ in Latin) and bad faith（’mala fides’ in Latin）are significant legal concepts in jurisprudence and legal history. “Bad faith” was  originally derived from the Twelve Tables (‘Lex Duodecim Tabularum’) of Ancient Rome. (Shang to please check and footnote if possible). There was an emphasis on “bad faith possession” and corresponding punitive damages could be awarded in such cases.  In fact, bad faith was an important element in the acquisition of real property in ancient Roman law as furthermore reflected in the first Civil Code composed by Justinian. In the cases of specificatio, if the claimant acted in bad faith - that is if he knew that the physical object belonged to someone else - he could not acquire the ownership of it. This fundamental legal principle was also highlighted in later years by Roman Law Scholars in Europe.

It is interesting to note that Bodenhausen, the first Director-General of the World Intellectual Property Organisation, defined bad faith along very similar terms in intellectual property law. He stated in trade mark cases that: “bad faith will normally exist when the person who registers … the conflicting mark knew of the … (prior foreign) mark and presumably intended to profit from the possible confusion between that mark and the one he has registered …” (Shang please footnote –see footnote 4 below – same citation).

New Trademark Regulations in China

More recently, the element of bad faith in international trademark law has become particularly relevant in view of new trademark regulations in China. 

The problem of trademarks registered in bad faith is particularly acute in the People’s Republic of China. According to State Industrial and Commercial Administration Bureau, there were 1826 cases of trademarks judged to be registered in bad faith in 2014 (a 127.4% year-on-year increase from 2013) of which 40% of the cases formed the basis of a gold rush to register trademarks with certain reputation in respect of relevant goods and services by pirates. Moreover, these figures merely include cases where final judgment was granted – the number would be higher should they include cases that did not proceed to final judgment due to the lack of sufficient evidence.

This article examines the impact of recent cases interpreting the Trademark Law of the People’s Republic of China (“Trademark Law”), as well as the anticipated impact of the draft Anti-Unfair Competition Law of the People’s Republic of China (“AUCL”). It argues that these changes in the law are steps in the right direction. However, further reforms are needed to effectively tackle the issue of bad faith registrations in China. Five such reforms are proposed:

1.    Recognising bad faith as an independent ground for the refusal, opposition, and revocation of a trademark.

2.    Incorporating an element of bad faith in Article 32 of the Trademark Law.

3.    Allowing for default judgment in trademark opposition and repeal proceedings.

4.    Reversing the balance of burden of proof in certain trademark cases.

5.    Establishing a blacklist of parties known to register trademarks in bad faith.

The current AUCL dates back to 1993. In March 2016, the State Council Legislative Affairs Office released a draft modernising and developing the law in this area. The draft AUCL also has the potential to provide relief for victims of bad faith registrations.

International Trade Mark Law and the Element of Bad Faith

Predatory intent or bad faith refers to the intent of the defendant to trade upon the reputation of another trademark by adopting a similar mark.[1]

As mentioned above, Bodenhausen pointed out that: “Bad faith will normally exist when the person who registers or uses the conflicting mark knew of the well-known mark and presumably intended to profit from the possible confusion between that mark and the one he has registered or used.”[2] In the context of proceedings for the refusal or an application or for the cancellation of a registration of a trademark, bad faith is typically a significant factor in weighing the competing interests of the parties concerned.[3]

Equally, during proceedings for injunctive relief the courts will, under the “balance of convenience test”, usually examine not only such factors as the damage that may result from a likelihood of confusion or dilution but also the presence of bad faith.  Judges are frequently confronted with the relevance of the element of “bad faith” in weighing the equities under the “balance of convenience test”.  What role should the factor of bad faith play in determining which of the two parties has the better right to the mark, i.e. the owner of the well-known mark who wishes to extend its business under its mark to a particular jurisdiction, or the local “enterprising entrepreneur” who intercepted the owner by first using or registering a similar mark there?

Bad faith as a subjective state of mind will more often than not have to be inferred from the circumstantial evidence than be proven by direct evidence.

No hard and fast rules can be drawn in cases where only the element of bad faith is present,[4] although in some jurisdictions the defendant’s knowledge of a prior, foreign well-known mark alone may be sufficient to form the basis for relief.[5] The archetypical case of bad faith registration is one of registration of a foreign well-known trademark and thereafter trading intentionally upon the reputation of that trademark.

The significance of bad faith in weighing the competing interests of the parties concerned was eloquently described in the landmark Orkin decision in Canada. [6]   Mr. Justice Morden concluded that: “the public are entitled to be protected from such deliberate deception and Orkin, which has laboured long and hard and made substantial expenditures to create the reputation which it now has … is entitled to the protection of its names from misappropriation”.[7] In the Ten-Ichi case in Hong Kong[8] the court expressed similar sentiments about the presence of bad faith: “all the plaintiffs wish to do is to exploit their legitimate business interests which have been accumulated over the years and which have achieved a high standard of international reputation.  They therefore would be prevented from opening a restaurant here apparently on the basis that the defendants have quite deliberately stolen their name and their deion; in my judgement, it defies common sense for me to say that the genuine interest of the plaintiff should be prejudiced in that way”.[9]

The element of bad faith was also considered to be a significant factor in court decisions in jurisdictions such as the Benelux, [10] Brazil, [11] France,[12] Germany,[13] Hong Kong,[14] India,[15] Israel,[16] Peru,[17] Singapore,[18] the United Kingdom,[19] Venezuela,[20] and Zimbabwe.[21]

As Professor McCarthy[22] notes under the U.S. law, where there is hard evidence present of the defendant’s intent to obtain a free ride on the coat tails of the plaintiff’s reputation, courts will not refrain from highlighting the underlying equities as evidenced in the following dictum: “Where as here it plainly appears that there is a purpose to reap where one has not sown, to gather where one has not planted, to build upon the work and reputation of another, the use of the advertising or trade name or distinguishing mark of another, is in its nature fraudulent and will be enjoined.”[23]

How does one prove the presence of an intent to trade on the reputation of a famous or well-known mark?  Since intent is a subjective state of mind it will more likely be inferred from circumstantial evidence than be shown by direct evidence.[24]

Direct evidence may, nonetheless, be present in some instances by way of prior written or oral statements by the defendant or in the form of instructions given by the defendant to a designer or printer.[25]

Such direct evidence is normally not readily available[26] so that intent is usually inferred from the conduct of the defendant.  Circumstantial evidence on which the courts have tended to focus is the access which the defendant had to the famous or well-known mark or the substantial similarity between the well-known mark and defendant’s mark.[27]  In circumstances where the defendant knew or clearly must have known of the famous or well-known mark,[28] and/or where there is a substantial similarity between the plaintiff’s and defendant’s respective marks,[29] a wrongful intent should easily be interred.  The inference drawn from such circumstances are even more compelling when the defendant had the freedom to choose from a wide variety of other possible marks but “just happened” to choose a mark confusingly similar to plaintiff’s mark”.[30]  For instance, the adoption of a foreign language word in the local jurisdiction which happens to be identical to a foreign well-known mark will require some explanation.[31]  Wrongful intent is also particularly apparent when the defendant’s explanation of why it chose a mark that is very similar to the famous or well-known mark defies all credulity: the elaborate epics one so often encounters in practice.[32]  In essence, if the defendant’s adaption of a mark similar to the famous or well-known mark is not merely “coincidental”, predatory intent should be proven.  Defendants do, however, often attempt to justify their choice as “coincidence”.  But, as has been noted: “In cases where defendant concocts an elaborately fantastic and strained scenario of how it “coincidentally” hit upon its symbol, judges are not amused when asked to swallow fantastic fabrications about coincidental, unknowing usage.[33]

The “coincidental” adoption by a defendant of inherently distinctive marks which are arbitrary, fanciful or coined such as, for example, LENOVO, XEROX or PEPSI, is almost always without credibility.[34]  The evidence may be equally compelling when it is shown that other truly distinctive elements, such as unique devices, original stylistic , foreign language words, or unique colour combinations, design features, and shapes were copied.[35]  The same principle applies to marks which are not inherently distinctive but have acquired distinctiveness.  For instance, one does not chance upon a bright idea in the middle of the night to adopt HUAWEI for cell phones or KENTUCKY FRIED CHICKEN for fast-food outlets.  In this context Lord Denning’s remark aptly applies: “The arm of coincidence may be long but it does not stretch to infinity”.[36]

It is also possible that a mark may have become so famous or well-known in the local jurisdiction that it is not conceivable for the defendant to pretend that it had no knowledge of the mark.[37]  It is equally possible that the intentional choice by a defendant to imitate a famous or well-known mark despite the legal risk involved can in itself testify “like a hundred witnesses as to the considerable reputation inherent in the mark in the eyes of the public”.[38]

It is submitted that once the plaintiff has produced sufficient evidence to establish the fact that the defendant knew or clearly must have known of the famous or well-known mark and/or that there is a substantial similarity between the plaintiff’s and the defendant’s respective marks, the burden of proof should shift to the defendant to explain such apparent knowledge or similarity and justify the coincidence.[39]

Similarly, if an intent to confuse the public by trading on the reputation of a well-known mark is established, an inference or a presumption of a likelihood of confusion may be appropriate.[40]

It should further be noted that Article 6bis (3) of the Paris Convention mandates that no time limit shall be fixes, in other words no statute of limitation applies, when injunctive relief is sought for preventing the use of a mark in bad faith.

Domain Name registrations and bad faith

The widespread adoption of the World Wide Web in the mid-to-late nineties was accompanied by several factors that created what might fairly be described as a crisis for trademark owners. The first-come, first-served method of allocating domain names created an environment that highlighted the inability of infringement and passing-off statutes to effectively guard trade-mark owners against the new tort of cybersquatting.[41]

The judicial and legislative response to cybersquatting has been to create measures to protect trademark holders from domain name registrations made in bad faith. For example, under the Internet Corporation for Assigned Names and Numbers’ Uniform Domain-Name Dispute Resolution Policy, the owner of trademark rights can successfully request the transfer or cancellation of a domain name if, amongst other things, the domain name has been registered and is being used in bad faith.[42] Similarly, the Paris Convention, which contains an article specifically dealing with conflicting domain names, specifically requires that the domain name has been registered or used in bad faith.[43] National legislations have similarly placed bad faith at the core of anti-cybersquatting measures.[44]

Bad Faith under China Trademark Law

The current China Trademark Law does not address “bad faith” directly, but instead, uses other similar or relevant terms, such as “deceptive”, “negative influence”, “fraudulent means”, “improper means”, etc. in different articles respectively.  These include:

Article 7, which requires trademark application and use should follow the Good Faith Principle.  Article 10.1.8, which prohibits signs detrimental to socialist ethics or customs, or having other negative influences from being used as trademarks. Article 32 (formerly Article 31 of the 2001 Trademark Law), which provides that: applications for trademarks registration may not infringe upon another person’s prior rights; and no applicant may register by improper means a trademark that is already in use by another person and has certain influence.  Article 44.1 (formerly Article 41.1 of the 2001 Trademark Law), which renders invalid trademarks whose registration is obtained by: fraudulent means; or other improper means.

Fortnum & Mason Case[45]

Fortnum & Mason, an upmarket department store in London, sought to challenge a trademark registered by a Chinese individual on 25 October 2002 (the trademark received preliminary approval on 7 March 2004). The case came before the Trademark Review and Adjudication Board (“TRAB”, or “the Board”), which gave its judgment on 17 October 2016. 

As the case was brought before the newest revision of the Trademark Law came into effect on May 1, 2014, the claims were dealt with in accordance with the 2001 Trademark Law. Fortnum & Mason successfully relied on Articles 31 and 41.1 of the 2001 Trademark Law to have the disputed trademark revoked.

The Board held that the trademark application infringed upon Fortnum & Mason’s prior copyright.

The Board first recited the elements needed to substantiate a finding of an infringement of prior copyright:  (1) The trademark in question is identical or substantially similar to works in which someone else holds a prior copyright, (2) The person who applied for the registration of trademark in question has, or might have come into contact with the works in which someone else holds a prior copyright, (3) The person who applied for the registration of trademark in question was not licensed by holder of the copyright.

The relevant trademark device was Fortnum & Mason’s clock logo (“the Fortnum Clock”) in the United Kingdom, in which they claimed a prior copyright. As Fortnum & Mason had not submitted the blueprints and design of the clock logo as evidence, it could not be taken to have had a prior copyright earlier than 4 September 1964, when details of the Fortnum Clock was published in a newspaper. The graphics of the disputed trademark and the Fortnum Clock were identical, and the respondent did not submit evidence to prove that the disputed trademark was created independently. The Board held that it could be presumed that respondent had known and copied the Fortnum Clock. In so deciding, the Board took into account the following: the originality and complexity of the Fortnum Clock, the graphic portion of the disputed trademark adopted by the respondent was almost identical to the appearance of the Fortnum Clock, part of the element of the disputed trademark consisted of Fortnum & Mason’s name.

The Board thus held that the respondent’s act of registering the disputed trademark had indeed infringed upon Fortnum & Mason’s prior right, and was accordingly in breach of Article 31 of the 2001 Trademark Law.

The Board also stated that the phrase “other improper means” in Article 41.1 of the 2001 Trademark Law refers to actions other than fraud, such as the disturbance of public order, harming public morals, or the improper use of public resources.

The Board found that the respondent had applied to register more than 40 trademarks, among which there were a number of famous trademarks such in British clothing brands, department stores, and French and Belgian foodstuffs (for example, Peter Rabbit, Godiva, and Harrods). The respondent could not explain the independent creation of these trademarks, and did not submit that he had used these trademarks.

The Board thus came to the conclusion that the respondent’s acts had the obvious intention of copying, counterfeiting and imitating other well-known trademarks. This would not only lead to consumer confusion about the source of goods and services, but also upset the proper processes of trademark registration as well as undermine fair competition within the market. The Board held that the respondent’s acts were accordingly in breach of Article 41.1 of the 2001 Trademark Law.

This section of the TRAB’s decision is most significant.  It is fully in accordance with the fundamental principles of international trademark law and its emphasis on the element of bad faith[46].  In fact, the Fortnum & Mason decision should be hailed as a landmark decision by the TRAB.  This judgement has laid the groundwork for fully recognising and relying on the significance of the element of bad faith in international trademark cases.[47]

Facebook Case

Liu Hongqun, the marketing director of the Zhongshan Pearl River Beer Company, applied to register three “face book” trademarks in multiple categories on 24 January 2011.  Facebook was able to successfully rely on Article 41.1 of the 2001 Trademark Law to have the disputed trademark invalidated. An appeal to the Beijing High Court by Liu Hongqun was dismissed April 2016.

The Court appeared to take a principled approach to the interpretation of Article 41.1 by first reciting the legislative spirit of the Article, which was to implement the tenets of public order and good customs, maintain good order for trademark registration and administration and create a healthy market environment.

The Court noted that the applicant had registered the “face book” trademark in multiple product categories, and had even registered the trademarks of other famous brands such as that of Darlie toothpaste and OnePlus One Android smartphones. Thus, there was a distinguishable intention to copy and plagiarise others’ famous trademarks, which impaired the fairness of market competition and violated the principles of public order and good custom. The applicant’s behaviour of wholesale registration of trademarks to obtain commercial interests for later resale to others (i.e.: cyber-squatting) was held to violate the intrinsic value of the trademark, affect proper registration trademark registration procedures and even hamper the normal business of the honest operators in the goods economy.

Accordingly, the Court ruled that the applicant’s acts were in breach of Article 41.1 of the 2001 Trademark Law.

Once again, this decision has placed an appropriate emphasis on the significance of the presence of bad faith in trademark cases.  Moreover, the court rooted its decision in the legislative spirit and intent of the Trademark Law.  This judgement may very well constitute another milestone in the development of Chinese trademark law and its approach consistent with international trade mark norms.

Michael Jordan Case[48]

This case was part of the extensive litigation between Michael Jordan, the American basketball player, and Jordan Sports Co Ltd, a Chinese sporting goods company. The litigation has lasted for over 4 years, and involved protracted disputes over multiple trademarks owned by Jordan Sports Co Ltd.

In this case, Michael Jordan sought to invalidate a trademark using the Chinese transliteration of his name, ‘乔丹’, which had been registered by Jordan Sports on 26 April 2007. On 31 October 2012, Michael Jordan submitted a request to TRAB to revoke the disputed trademark. The case was appealed multiple times and eventually came before the Supreme People’s Court (the highest court in China) which gave its decision on 7 December 2016.

As with the Fortnum & Mason case, the claims were dealt in accordance with the 2001 Trademark Law. Michael Jordan successfully relied on Article 31 of the 2001 Trademark Law to have the disputed trademark revoked, although he failed to prove his case on Articles 10.1.8 and 41.1 of the 2001 Trademark Law.

The Court first held that for the purposes of Article 31 of the 2001 Trademark Law, a person’s name could by itself constitute a prior right, provided that (a) that name has a certain reputation and is known to the general public, and refers to a natural person, and (b) that name has a stable correspondence with the natural person it refers to.

Applying these principles to the facts, the Court held that Michael Jordan enjoyed a prior right in the form of name-rights. He enjoyed such a right not only in his English name, but also its Chinese transliteration ‘乔丹’.

The Court then focused on Jordan Sports’ subjective knowledge, noting that the company knew that Michael Jordan’s fame within China was long and wide-ranging. In spite of this, Jordan Sports had gone on to register a trademark using the name '乔丹’.The court stated that this could easily lead to public confusion that the disputed trademark and Michael Jordan were linked, thus damaging Michael Jordan’s name-rights. Jordan Sports had thus acted with subjective malice.

The Court also held that any information relating to Jordan Sports’ large market share, its large business revenues, and the fact that Jordan Sports’ own shoe box design had been admitted as a well-known trademark by the Trademark office were all irrelevant to the Article 31 enquiry. Facts surrounding Jordan Sports’ business conditions, the name of the company itself, as well as the circumstances surrounding the publicity, use, awards, and protection of the disputed trademark could not be used to legitimise the adoption of the disputed trademark by the defendant.

Accordingly, the Court held that the registration of the disputed trademark had been in violation of Article 31 of the 2001 Trademark Law. The trademark of the defendant was revoked and the issue was remitted back to TRAB for a re-hearing.

The Court held that there was no negative impact on the public interest and public order of China's political, economic, cultural, religious and ethnic groups.  The Court also held that the registration of the disputed trademark did not constitute disturbing the registration order of the trademark, impairing the public interest, improperly taking up public resources or otherwise seeking improper interests. Accordingly, it did not fall within the “other improper means” limb of Article 41.1 of the 2001 Trademark Law.  Michael Jordan did not provide evidence that the registration of the disputed trademark was registered by deception.

It is submitted that the Court missed out on an opportunity to deal with the significance of the element of bad faith.  Having said this, it seems that the pleadings may not have involved the relevant arguments and evidence to opine on this important issue.

Further Recommendations

As analysed above, the recent cases interpreting the Trademark Law suggest that 44.1 of the Trademark Law show some promise as a route to the invalidation of trademarks registered in bad faith.

The Article 44.1 (which case Shang?) cases discussed above involved cases of clear cyber-squatting. In finding that the actions of the respondents constituted registration by improper means, the relevant courts and tribunals in each case placed emphasis on the fact that the owners of the disputed trademarks had also registered large quantities of other trademarks in multiple product categories.

Proposed Solutions

The cases above illustrate the limited effectiveness of the existing provisions under Chinese law to protect good faith trademark owners against bad faith registrations. It is submitted that provisions which specifically refer to bad faith ought to be explicitly recognised in the law. This could be done in one of two ways:

First, bad faith could be recognised as an independent basis for the refusal, opposition, or revocation of trademarks. This has the benefit of clarity, and of aligning Chinese law with international practice where provisions targeting bad faith registrations are explicitly set out as independent provisions.[49]  However, it would take some time for judicial interpretation to build up a body of case law on what constitutes bad faith in China.

Second, bad faith could be incorporated into Chinese law through an interpretation of Article 32 of the Trademark Law. Article 32 provides that applicants should not register in an improper manner a mark that is “already in use by another party and enjoys substantial influence”. Since virtually all bad faith registrations involves marks that are already in use, this provision would clearly work to combat bad faith registration. Presently, using Article 32 in such a way may be precluded by an Opinion of the Supreme People’s Court, which interpreted “use” (albeit in the context of cancelling a registered trademark which has not been used for three consecutive years) to refer only to actual use within China mainland.[50] Changing the law here might thus be effected by a new Opinion from the Supreme People’s Court clarifying the issue, which might be easier to achieve than a legislative amendment to the Trademark Law by the National People’s Congress.

The cases above are examples of trademark opposition or revocation proceedings that took years to come to a conclusion. In many cases, the disputes were appealed multiple times. It is notable that the successful claimants here in the cases described above have the means to contest bad faith filings.  Small-and-medium enterprises may not have the access or resources to support a lengthy dispute resolution process or to afford legal representation.

Accordingly, proposals for reform here should focus on making the procedure for the opposition of trademarks easier and less expensive.

Default Judgements

One suggestion could be to allow for default judgments to be entered where the respondent to an application for trademark opposition or repeal fails to respond. This has the benefit of harmonising Chinese law with the large number of other jurisdictions (including civil law jurisdictions) that allow for such a procedure.[51] Shang to expand (also refer to INTA).

Blacklists

In order to effectively combat bad faith registration, the Trade Mark Office could consider the establishment of a blacklist of applicants who had registered trademarks in bad faith.

One possibility would be to harmonise the blacklist with existing legislation. The China State Industry for Industry and Commerce (“SAIC”), which also administers TRAB, has recently published its Interim Measures for the Administration of the List of Businesses Seriously Violating the Law and Becoming Discredited, which took effect on 1 April 2016.[52] The interim measures set out circumstances in which a business could be blacklisted, such as: 1) if it has where a business has incurred administrative penalties regarding unfair competition more than three times within two years; or 2) has incurred administrative penalties regarding trademark infringement more than twice within five years. 

Thus, businesses which have had had their trademarks successfully opposed or revoked more than a certain number of times in a certain number of years could be candidates for blacklisting.

The significance of being placed on a blacklist could vary. Possible suggested effects might include: 1) a presumption reversing the burden of proof in trademark disputes to oppose or revoke trademarks registered by the blacklisted entity, 2) additional scrutiny to be placed on blacklisted entities’ attempts to register trademarks, 3) additional penalties to be imposed if a blacklisted entity has its trademark revoked or opposed for bad faith registration.  It is of interest to note that this is exactly what the Roman Law rules on bad faith provided for in a related context 2,000 years ago.

Such a blacklist could develop into a very useful tool for the authorities who have to confront bad faith filings on a daily basis. It should be noted that, as elsewhere in trade mark cases, the 'whack-a-mole’ issue – when one shuts down a bad faith pirate in one area they may pop in another spot under a different name - may surface in this context too. The possible answer to this problem would be to use the blacklists in conjunction with ‘notice and trackdown’ procedures to stop bad faith conduct at source.[53]

Conclusion

Currently, the way in which courts and tribunals in many countries, including China, deal with the intentional trading upon the reputation of famous and foreign marks has become an important factor in the trading relation between nations. The international standards of fair play and comity between nations suggest upholding the equities when the circumstances of the case warrant it rather than strictly applying the principle of trader mark “territoriality”. The protection of the global trading system through the prevention of piracy and unfair exploitation of foreign marks is of great significance to contemporary commerce.

[1] Frederick Mostert, Famous and Well-Known Marks – an International Analysis (INTA 2015) 1-48.

[2] GHC Bodenhausen, Guide to the Application of the Paris Convention for the Protection of Industrial Property- As Revised at Stockholm in 1967 (WIPO Publication 1968) 93.

See also the definition of bad faith in the accompanying text for fn 6. See also the ground for refusal and cancellation on the basis of bad faith provided for in Article 3(2)(d) of the EU Directive and Article 113(c) of the Cartagena Agreement (see http://www.wipo.int/wipolex/en/details.jsp?id=9454) and WIPO Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks (Article 4) (see http:/ /www.wipo.int/about-ipien/development_iplaw /pub833-toc.htm#Top0f-Page).

[3] Mostert (n 1), 1-48

[4] Mostert (n 1), 1-66

[5] SA Wimpy (Pty.) Ltd. v Burger King Corporation, decision of the Registrar of Trade Marks 14 June 1978, reported in September 1978 South African Patent Journal, 166, noted at 69 TMR 172 (1979); Fromargeries Bel SA v Ivaldi, Enrique, La Ley (Supreme Court, Federal Chamber, Buenos Aires, 26 June 1963) reported by E.D. Aracama Zorraquin, La Pirateries Des Marques En Droit Argentina, La Propriété Industrielle 339 at 342-43 (November 1982)

[6] Orkin Exterminating Co. Inc. v Pestco Co. of Canada Ltd. (1985) 50 OR (2d) 726, 19 DLR (4^th) 90, 5 CPR (3d) 433 (Ont CA)

[7] ibid 448

[8] Ten-Ichi Co. Ltd. v Jancar Ltd. [1990] FSR 151, [1989] 2 HKC 330.

[9] ibid 157-58. Various Chilean cases have held that it is unfair competition for a junior user to register a mark that is well known abroad in order to prevent exports of goods bearing the legitimate (senior user’s) trademark into Chile. See, for example: Decisions of the Comisión Preventiva Central 7 July 2000, Cases No. 146-00 and No. 259-00 (VIMAR); Decision of the Comisión Preventiva Central 11 August 2000, Case No. 244-00 (PICADILLY); Decision of the Comisión Preventiva Central 1 September 2000, Case No. 1136 (BIBI).

[10] Ben & Jerry case (the Hague District Court, 20 September 1995 – reported in INTA Bulletin, 12 February 1996 at 4). See also for a discussion of this case Charles Gielen, Chapter 3, Benelux, Section V.

[11] Uno a Erre Italia Spa v the INPI AC (Judicial Register DJ-II, 19 March 1991 at 19304)

[12] Corona case (Bordeaux Court of Appeal, 28 February 1994); Aldi Marche case (Caen Court of Appeal, 4 January 1990)

[13] Dimple case (German Federal Supreme Court, 29 November 1984) [1985] GRUR 550, 17 IIC 271 (1986). In this, the Federal Supreme Court of Germany was willing to extend the protection granted against the unauthorised used on non-competing goods, traditionally reserved for “famous” marks only, to “well-known marks” as well. In reaching this conclusion, the court placed emphasis on the fact that the defendant had acted contra bonos mores (against good morals) in the context of Section 1 of the German Act Against Unfair Competition. In particular, the court highlighted the fact that the defendant had acted intentionally in an attempt to unfairly associate its products with the prestigious products of the plaintiff.

[14] Re Omega (Hong Kong High Court, 21 April 1995) [1995] 2 HKC 473, 478-479

[15] N.R. Dongre v Whirlpool Corpn. (Civil Appellate Jurisdiction, High Court of Delhi, 21 March 1995 at 38, AIR Delhi 300 (1995) – affirmed by the Supreme Court of India, 30 August 1996)

[16] City Central Ltd. v Chanel (French Société Anonyme) (Tel-Aviv–Jaffa District Court, 7 February 1995)

[17] Reebok case (Peru Trademark Office, Judicial Decision No. 003040-96 Indecopi/Osd, 8 May 1996)

[18] RH Macy & Co. Inc. v Trade Accents (Singapore High Court, 27 June 1991) [1992] 1 SLR 581

[19] Harrods Ltd. v R. Harrod Ltd. (1924) 41 RPC 74; John Walker & Sons Ltd. v Henry Ost & Co. Ltd. [197-] RPC 489. Bad faith can also be found in the UK where the applicant seeks to register a mark that she/he has no intent to use (see, for example, Granada Television’s Application (BETTY’S KITCHEN CORONATION STREET) [2001] RPC 825). This finds a parallel in the domain name cases where bad faith is found because the domain name registrant registers a domain name with no intent to use it, but instead intends to sell it on.

[20] Galerias Lafayette SA (Supreme Court of Justice, Venezuela, 10 March 1994)

[21] Marks and Spencer (Southern Rhodesia Ltd.) v Greaterman Stores (Rhodesia) Ltd. (Parents Tribunal for the Federation of Rhodesia and Nyasaland, 16 August 1961), Patent and Trade Marks Journal 223 (1961). Finding lack of bona fides not upheld on appeal (High Court, Southern Rhodesia, 19 October 1961), Patent and Trade Marks Journal 1961.

       See also Miles Alexander (1995) “International Protection of Famous Trademarks in the United States,” INTA Annual Meeting 1995, 141 at 179, who indicates in relation to dilution cases in the United States that: “It is relatively clear that the deliberate adoption of a mark to trade upon the reputation and goodwill of another company will be seriously considered by the court as a relevant, if not determinative, factor in deciding the case.”

[22] J McCarthy, McCarthy on Trademarks and Unfair Competition (4th edn, Thomson Reuters 2003), § 23.110

[23] Aetna Casualty & Surety Co. v Aetna Auto Finance Inc., 123 F.2d 582, 584, 51 U.S.P.Q. 435, 437-438 (5th Cir. 1941), cert. denied, 315 U.S. 824, 62 S. Ct. 917, 86 L. Ed. 1220, 52 U.S.P.Q. 644 (1942) 152). See also Sarl Le Book Editions v. Ste EPC Edition Presse Communication and Ste David Ken Productions (Tribunal de Grande Instance de Paris, 18 February 1998) [1999] ETMR 554, where unfair competition was found when the defendant had employed "doorstepping," i.e., by using a mark reminiscent of the plaintiff's mark and drawing attention to the benefits of his product over the plaintiff's product he "sought to take advantage of the success of the product published by the plaintiff, and to position itself within its 'slipstream' with a view to capturing part of its client base." See further Cartier Inc. v. Deziner Wholesale LLC. 55 U.S.P.Q.2d 1131 (S.D.N.Y. 2000) (infringement found where defendant used 1. ABC —TIER mark on boxes of novelty sunglasses in order to attract consumers' attention, capitalizing on the goodwill associated with the CARTIER name).

For a general discussion of the element of bad faith see also in general: James Carney ‘Setting Sights on Trademark Piracy: The Need for Greater Protection Against Imitation of Foreign Trademarks’ (1991) 81 TMR 30 at 41, 55-56; McCarthy (n 22) § 23:104-23:106; World Trademark Symposium ‘Famous Trademarks’ (1992) 82 TMR 989, 988; Frederick Mostert ‘Is Goodwill Territorial or International? Protection of the Reputation of a Famous Trade Mark which Has Not Been Used in the Local Jurisdiction’ (1989) 12 EIPR 440 at 446, 448.

[24] See in general, Carney (n 23) 41, 55-56; McCarthy (n 22), § 23.116

[25] Mostert (n 1), 1-56

[26] This is not unlike the access and substantial similarity standards applied in copyright law. See, for example, Team Lotus Ventures Ltd.'s Application; Opposition of Group Lotus Ltd. (UK Trade Marks Registry,23 October 1998) [1999] ETMR 669, a case where the applicant failed to register a TEAM LOTUS device mark both because it infringed the copyright of the opponent's TEAM LOTUS device marks and on bad faith grounds because the "striking similarity" between the two sets of marks meant that it would be "incredible" to find that the applicant produced its mark as a result of coincidence.

[27] This standard, mentioned in the first edition of Mostert (n 1), has now been adopted in the WIPO Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks, Article 4(5)(c). (see http:/ /www.wipo.int/about-ip /en/development_ iplaw /pub833-toc.htm#Top0fPage). See also McCarthy (n 22) § 23:115.

A compelling inference of knowledge on the part of the defendant is obvious where some prior business relationship existed between the plaintiff and the defendant, for example, where the defendant acted as licensee, franchisee, importer, distributor, agent or employee of the plaintiff. See Gielen and Wichers Hoeth, paragraph 546 at 217 – Shang to check.

[28] Carney (n 24) 55, McCarthy (n 22) §23.119

[29] See Carney (n 24), 55; McCarthy (n 22), § 23.119.

[30] McCarthy (n 22), § 23.115. In this respect the judge in the Orkin case, note 8, supra, at 448, declared: "Bearing in mind that Pestco [defendant] has a virtually infinite range of names and symbols from which to choose, it is difficult to see the enjoining of it from using the name and logo of a well-established company in the same business as an unreasonable restraint on its freedom to carry on business as it sees fit.”

[31] In Apple Computer Inc. v Apple Leasing Industries (Delhi High Court, 4 May 1991) 1992.

[32] In RH Macy & Co. Inc. v Trade Accents (Singapore High Court, 27 June 1991) [1992] 1 SLR 581, 589 for instance, the court described the defendant’s explanation as “elliptical” as to why it adopted the uncommon “Macy’s” name and stated further: “The respondent’s explanation as to how they came to adopt the name Macy’s is desultory and unsatisfactory … it is clear that the respondents are attempting to obtain and take advantage of the applicant’s reputation.” See also Hong Kong Caterers v Maxim’s Ltd. (Hong Kong High Court, 18 July 1983) [1983] HKLR 287, 290. A lack of any explanation may be equally compelling, see Re Omega (Hong Kong High Court, 21 April 1995—[1995] 2 HKC 473 at 478). See also Shields v. Zuccarini, 89 F. Supp. 2d 634, 54 IU.S.P.Q.2d 1166 (E.D. Pa. 2000) (defendant's explanation that he selected the name of the senior user's cartoon as his domain name in order to run a site protesting the mutilation of animals in the senior user's cartoons rejected because until the case was brought he was running an advertising site from that domain name). Mr. Justice Jacob's pithy obiter remarks in relation to bad faith in Nike (Ireland) Ltd. v. Network Management Ltd. (English High Court, Chancery Division, 22 July 1994—[1994] 12 EIPR D-319) are well worth mentioning here. He stated that: "James LJ, in a passing off case in the last century, used the memorable expression: 'What would one man of the world think of another man of the world saying that?' "

[33] McCarthy (n 22), § 23.116.

[34] The Peruvian Trademark office in the Reebok case (Peru Trademark Office, Judicial Decision No. 003040-96-Indecopi/Osd, 8 May 1996), for example, specifically commented on the uniqueness of the REEBOK word mark, stating: “The fact that the REEBOK name is a fancy word with no conceptual contents in any language, being, therefore an intellectual creation which in its own nature is a unique and individual action, which cannot be repeated in time.”

[35] In re Reebok International Limited v Demitrios Tsikatos (Greek Administrative Court, 8 November 1995, decision no. 18508), noted 96 TMR 923 (1996) the use of a design very similar to the REEBOK STRIPECHECK design, together with the use of a name (REMICK) which was not overly similar to REEBOK was found to be more than coincidence. The applicant had come as close as he could to REEBOK and so was found to be acting in bad faith in order to take advantage of REEBOK’s wide reputation.

[36] The State of the Netherlands v Ian Humlum (WIPO Arbitration and Mediation Center, 17 June 2002) [2002] ETMR 98.

[37] In Apple Computer Inc. v Apple Leasing Industries (Delhi High Court, 4 May 1991) 1992(1) Arbitration Law Reporter 93, 137, the court indicated that “In view of the advertisement, the defendant cannot be permitted to pretend as they appear to, that they did not know of Apple Computers.”

[38] City Central Ltd. v Chanel (French Société Anonyme) (Tel Aviv-Jaffa District Court, 7 February 1995). The court even indicated that proof of reputation along these lines could be so compelling that there would be no need for survey evidence to prove reputation. See also Hong Kong Caterers Ltd. v. Maxim's Ltd. (Hong Kong High Court, 18 July 1983) [1983] HKLR 287, 297; McDonald's Corpn. v. Joburgers Drive-Inn Restaurant (Pty) Ltd. (Supreme Court of South Africa, Appellate Division, 27 August 1996) (Supreme Court of South Africa, Appellate Division, 27 August 1996 at 36-37) 1997 I SA 1(A) at 46, 48, 65.

[39] See World Trademark Symposium “Famous Trademarks” (1992) 82 TMR 989, 988; Peter Dirk Siemsen, Chapter 3, Brazil, Section V, above. In Argentina, the similarity or identity of the plaintiff's and defendant's marks cannot be considered a coincidence when both parties are operative in the same market because there is a presumption that the defendant must have known of the plaintiff's mark (see Entrecop Corporation v. Ifade SRL (Federal Court of Appeals of Buenos Aire, Room II, Case 22.438/96, 12 September 2000), and Cerigliani, Carlos Eduardo v. Lorenzo, Roberto N. SA and Gold's Gym Enterprises Inc. v. Cerigliani, Carlos Eduardo (Federal Court of Appeal of Buenos Aires, Room III, Cases 20.477/95 and 15.190/85, 17 October 2000)).

[40] It is obvious than an intent to trade on the reputation of a well-known mark logically includes the motive to do so by confusing the public.

[41] Mostert (n 1) 2-127

[42] Paragraph 4(a) UDRP Policy

[43] Article 6(1) of the Paris Convention provides that “A domain name shall be deemed to be in conflict with a well-known mark at least where that domain name, or an essential part thereof, constitutes a reproduction, an imitation, a translation, or a transliteration of the well-known mark, and the domain name has been registered or used in bad faith.”

[44] See, most notably, the United states Anticybersquatting Consumer Protection Act, which reads in pertinent part: “d(1)(A) A person shall be liable in a civil action by the owner of a mark […] if […] that person has a bad faith intent to profit from that mark”.

[45] 商评字［2013］第144794号重审第0000001255号

[46] See Mostert, Famous and Well-Known Marks – an International Analysis, Chapter 1, V. Protection of Famous and Well-Known Marks and the Element of Bad Faith – 1-47-1-74.

[47] See Mostert, Famous and Well-Known Marks – an International Analysis, Chapter 1, V. Protection of Famous and Well-Known Marks and the Element of Bad Faith – 1-47-1-74.

[48] (2016)最高法行再27号

[49] See e.g.: Article 3(2)(d) of the European Union Trade Mark Directive

[50]最高人民法院印发《关于审理商标授权确权行政案件若干问题的意见》的通知 [现行有效], Article 20

[51] Jurisdictions which allow default judgment to be entered in cases of trademark opposition include the United States, Canada, Britain, Australia, New Zealand, Belgium, Netherland, Luxembourg, India, Singapore, Malaysia, Thailand, Poland, and Hong Kong.

Jurisdictions where which allow for default judgment in cases of trademark revocation include are: United States, Britain, Japan, Sweden, Indonesia, Belgium, Netherland, Luxembourg and INTA – Shang to expand.

[52] http://www.lexology.com/library/detail.aspx?g=369960af-6fb4-47b7-96e0-8375dc43aba1

[53] Frederick Mostert and Martin Schwimmer “Notice and Trackdown”, Intellectual Property Magazine (June 2011).