On July 18, 2017 (Ref.: R 1670/2015-4), the European Union Intellectual Property Office (EUIPO) had to decide what it described as the clearest case of a trademark application filed in bad faith. A lawyer had “hijacked” his client’s trade mark and secretly registered it after the client had not paid the fees.
Lawyer registers his client’s name as a trademark without being asked
The lawyer had nothing to do with the vehicles under the name “Erdmann & Rossi” until the beginning of his client relationship. However, he was then commissioned by his client to prepare a license agreement for “Erdmann & Rossi”.
After a payment of the application fee for the trademark application for “Erdmann & Rossi” was not paid by the client, the lawyer asked whether the client was still interested in exploiting the trademark name. If not, the file would be closed. However, he did not inform his client of the lawyer’s plan to register the trademark as his own trademark.
A short time later, the lawyer registered the trademark for himself at the DPMA. Six months later, he also registered the trademark at European level with the EUIPO and dropped the national trademark.
Former client registers IR trademark at the same time
In the meantime, however, the former client had also registered the name “Erdmann & Rossi” as an IR (internationally registered) trademark. Naturally, the lawyer could not let this go and took action against the IR trademark from his EU trademark.
In principle, the trademark that was registered first takes precedence. However, this does not apply if one of the parties is acting in bad faith. In the opinion of the court, the events that led to the application must be considered in their entirety.
EUIPO: Clearest case of bad faith in a trademark application
In the opinion of the EUIPO, several reasons led to bad faith on the part of the lawyer. The lawyer was aware of the economic value and the factors resulting from it after being mandated. In addition, he should have refused the mandate if he himself had been fascinated by the vehicles of the origin “Erdmann & Rossi” for decades – as claimed in the trial – and had wanted to register the trademark.
In addition, the lawyer disregarded the fact that the sign of his trademark corresponds to the company name of his former client, which had already been in use for years. The registration of the sign by someone other than the client would ultimately significantly hinder the client’s business.
In addition, the lawyer wanted to use the reputation and advertising value of an already well-known, renowned trademark for himself without ever having contributed to the advertising value. He also made the mistake of registering the trademark for Nice Class 12 (vehicles) without ever having given the impression that he wanted to start a business relating to vehicles.