The challenging evidence of bad faith and trade mark use!

Symbole copyrightOn 10th December 2013, the Hague Court of Appeal has adopted a severe stance in relation to the evidence of trade mark use and of the defendants’ bad faith (200.110.341/01). As such, the company Promodyne manufactured cigarettes under the mark Maba, which was then exported to Asia by the company Zhu. Furthermore, the company Great Blue Sky International has filed a Community trade mark application for the mark Maba. Some months later, the company Zhu filed a trademark application for the same mark in Benelux. In response to the opposition made by Great Blue Sky International and Promodyne, the company Zhu claimed for the latters’ bad faith.

In order to prove bad faith, the Hague Court of Appeal requested the company Zhu to demonstrate that it was using the mark Maba in at least one of the countries of the European Union before the defendants filed a Community trade mark application. In other words, the company Zhu had to provide proof of prior rights in the European Union. The latter declared having used the mark for export purposes as per Article 15 (1) (b) of the Regulation No. 207/2009 on Community trademark.

However, the Hague Court of Appeal did not consider this point. It deliberated that the use of the trademark in the framework of exportation of the products outside the European Union constituted a use of trademark only if it is contrary to one of the functions of the mark. It is what has been retained in this case when specifying that although the products are meant for exportation, there is a risk that they reach the European market through the initiative of the owner or third parties. Moreover, as the products are directly sent to Asia, it seems difficult for the company Zhu to prove any sufficient prior use of the mark on the European market.

One can speculate on the solution of the Hague Court of Appeal if the company Zhu would have succeeded in providing evidence of sufficient prior use of the trademark. Would it have retained the defendants’ bad faith? In assuming that an appeal is requested before the Court of Justice of the European Union, it is not sure that it would follow the same reasoning as the Hague Court of Appeal.