The applicant had been an employee of the objector at their nightclub ‘Chinawhite’ and whose principal attraction was a cocktail of the same name. Employees signed a confidentiality agreement as to the recipe. Having left the employment, the appellant set up a company with a similar name and applied for the mark ‘CHINA WHITE’. The respondent had successfully objected to the application to register the trade mark on the basis of it having been made in bad faith.
Held: The appeal failed. The standard for dishonesty set out in Twinsectra was the test applicable under the 1994 Act for bad faith in a trade mark application. It was a mixture of objective and subjective elements; whether the applicant’s state of knowledge was such that his decision to apply for registration would be regarded by persons adopting proper standards as being in bad faith.
Sir William Aldous said: ‘The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.’
Lord Justice Pill Lady Justice Arden Lord Jusice Aldous
 FSR 10,  EWCA Civ 1028, Times 19-Aug-2004
Trade Marks Act 1994 5(4)(a), Council Directive 89/104/EEC
England and Wales
Cited – Twinsectra Ltd v Yardley and Others HL 21-Mar-2002
Solicitors acted in a loan, giving an undertaking as to its application. In breach of that undertaking they released it to the borrower. The appellants appealed a finding of liability as contributors to the breach.
Held: ‘Money in a . .
Cited – Gromax Plasticulture Ltd v Don and Low Nonwovens Ltd PatC 12-Jun-1998
The court set out tests of bad faith for applications for the registration of trade marks: ‘I shall not attempt to define bad faith in this context. Plainly it includes dishonesty and, as I would hold, includes also some dealings which fall short of . .
Cited – Surene Pty Ltd v Multiple Marketing Ltd ETMR 2000
(Cancellation Division) (year?) The proprietor, Multiple Marketing, distributed the applicant for revocation’s products under the trade mark BE NATURAL.
Held: The application had been made in bad faith: ‘Bad faith is a narrow legal concept in . .
Cited – Senso Di Donna’s Trade Mark ETMR 2001
The First Cancellation Division considered what would count as bad faith in an application for a trade mark: ‘Bad faith is a narrow legal concept in the CTMR system. Bad faith is the opposite of good faith, generally implying or involving, but not . .
Cited – Lancome Parfums et Beaute and Cie’s Trade Mark ETMR 2001
Bad faith in application for trade mark . .
Approved – ‘Daawat’: Application No 2032467 TMR 10-Jun-2002
cw Appeals to the Appointed Person Decisions – Trade Marks – Invalidity . .
Cited – Regina v Ghosh CACD 5-Apr-1982
The defendant surgeon was said to have made false claims for payment for operations, and was charged under the 1968 Act. He claimed to have been entitled to the sums claimed, and denied that he had been dishonest. The court considered the meaning of . .
Cited – Royal Brunei Airlines SDN BHD v Tan PC 24-May-1995
(Brunei) The defendants were a one-man company, BLT, and the one man, Mr Tan. A dishonest third party to a breach of trust was liable to make good a resulting loss even though he had received no trust property. The test of knowledge was an objective . .
Cited – Jules Rimet Cup Ltd v The Football Association Ltd. ChD 18-Oct-2007
The parties disputed on preliminary issues the ownership of the rights in the trade mark ‘World Cup Willie’. The claimant had set out to register the mark, and the defendant gave notice of its intention to oppose. The claimant now alleged threat and . .
These lists may be incomplete.
Updated: 13 January 2021; Ref: scu.199567