Bad faith on registrations of famous trademarks

*Bad faith:  1) n. intentional dishonest act by not fulfilling legal or contractual obligations, misleading another, entering into an agreement without the intention or means to fulfill it, or violating basic standards of honesty in dealing with others. Most states recognize what is called «implied covenant of good faith and fair dealing» which is breached by acts of bad faith, for which a lawsuit may be brought (filed) for the breach (just as one might sue for breach of contract). The question of bad faith may be raised as a defense to a suit on a contract. 2) adj. when there is bad faith then a transaction is called a «bad faith» contract or «bad faith» offer.

One of the most often criminal activities for copying a trademark is trying to obtain the registration of a trademark, which is famous in another country but has not yet been registered in Peru.

For example, third parties have applied to register the brands shown below in Peru. The football club brand owners – Manchester United PLC (Great Britain), FC Bayern München AG (Germany), Futbol Club Barcelona (Spain) and Club Atlético River Plate AC (Argentina) – filed oppositions based on the fact their trademarks are well known in the marketplace.

Evidence to prove bad faith

The original owners did not have the evidence usually required to prove bad faith, such as business documents (letters, contracts, invoices) showing that they had developed a business relationship with the applicants or documentation that could prove the importation of goods by the opponents using these trademarks to Peru. However, the brand owners did provide the examiner with extensive publicity in the media (magazines, newspapers, TV and radio) proving that their football clubs’ names were well-known brands in the marketplace.

Taking this into account, the Peruvian trademark and Patent Office (INDECOPI) stated that the oppositions were well-founded by pointing out that it was obvious that the applicants knew that these brands belonged to third parties. We think this interpretation is right as well as justified and supported by Peruvian IP regulations, which prohibit the granting of a trademark that has been applied for in bad faith, although on registrations there is no conclusive evidence that proves the bad faith since this can be inferred from the market by itself as well as from the knowledge of such a market by the people. This doctrine is called «circumstantial evidence».

*Legal Dictionary services and ressources, Law.com