Filed in bad faith? Genuine intention when filing a trade mark application

Recent developments in the trade mark case between Bullards and Red Bull have served to highlight the significance of having genuine intention when filing a trade mark application, as the team at Serjeants explains.

Bullards’ trade mark application: an overview

genuine intentionNorwich-based gin maker Bullards has recently filed a UK trade mark application (UK00003520508) to protect its trade mark “Bullards” for an extremely wide variety of goods and services. The goods specified in the application include the obviously relevant “gin” and “alcoholic beverages” but also include a lot of other goods, most importantly “energy drinks” in class 32.

When filing a UK trade mark, the Applicant makes a legal statement that they are either already using the trade mark for the goods and services or that they have a genuine intention to do so. This means that, by filing their trade mark application, Bullards made a public legal statement that they intend to use the trade mark Bullards on energy drinks.

Opposition from Red Bull

Energy drinks distributor Red Bull is notoriously protective of its brand and will oppose any application for energy drinks containing the word Bull or any similar word. It therefore comes as no surprise that the company has opposed Bullard’s UK trade mark application. Red Bull has offered to withdraw the opposition if the goods and services relevant to its business are deleted from Bullards’ trade mark application. For example, it is happy for Bullards to proceed with the registration for gin, but not for soft drinks or energy drinks.

Bullards has not taken this lying down. Russell Evans, the founder of Bullards, came out with a public statement disputing the opposition:

“What they’re claiming is ludicrous, there is no confusion whatsoever and actually if we did concede we would be admitting there was[…] But they’re saying[…] we can’t do energy drinks – not that we would ever want to do energy drinks.”

Filed in bad faith?

Unfortunately, this statement may at least partially torpedo Bullards’ defence of its trade mark.  This is because Mr Evans has publicly stated that Bullards has no intention to ever use its trade mark for energy drinks and this goes directly against the legal statement it made when filing the trade mark application; Bullards does not have a genuine intention to use their trade mark for energy drinks.

As decided in the trade mark case of Sky vs Skykick, a trade mark registration or application can be cancelled due to bad faith when there is no intention to use the mark for all the goods and services in the specification at the time of filing. However, it must be proved that the applicant was dishonest when they filed the application. Typically, this is very difficult to demonstrate – but the company founder inadvertently admitting to it in a public statement certainly won’t help Bullards’ defense.

If Mr Evans’ statement is true, this means that the trade mark application for Bullards was filed in bad faith insofar as it covers energy drinks. The inevitable outcome is that energy drinks will have to be removed from the application, either voluntarily or at the end of the opposition procedure.

The importance of genuine intention

If Bullards had no intention to use its trade mark for energy drinks, it should not have been included in the trade mark application. As any UK trade mark expert should know, including energy drinks in an application for a trade mark containing the word “bull” made an opposition by Red Bull almost inevitable, increasing the applicant’s costs significantly.

It is important for all trade mark applications to include the correct goods and services that the applicant genuinely has an interest in. This is something the expert trade mark team at Serjeants can advise you on.

Please call us on +44 (0) 116 233 2626 or send an enquiry here for further trade mark advice.