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    Bad faith test for trademark

    The test whether an application to register a trade mark was made in bad faith was both objective and subjective, the standard being that of acceptable commercial behaviour observed by reasonable and experienced persons in the particular commercial area being examined.

    The Court of Appeal (Lord Justice Pill, Lady Justice Arden and Sir William Aldous) so held in a reserved judgment on July 27, 2004 dismissing the appeal of the applicant, Karl Harrison, against the dismissal by Mr Justice Pumfrey on December 19, 2002, of his appeal from the decision of the hearing officer, Mr S P Rowan, acting for the Registrar of Trade Marks, that the objections of the opponents, Teton Valley Trading Co Ltd, succeeded.

    The opponents owned a nightclub, Chinawhite, under the Café Royal Hotel, London. Their bar staff developed a house cocktail drink with the same name. They signed an agreement to keep its recipe confidential.

    The bar manager informed the applicant of the drink, said he was not bound by any formal contract and the applicant incorporated a company, China White Ltd, with the bar manager as a director and applied to register the trade mark “CHINA WHITE” for the drink.

    SIR WILLIAM ALDOUS said that the test of dishonesty set out Twinsectra Ltd v Yardley ([2002] 2 AC 164, 174) applied to considerations of bad faith in section 3(6) of the Trade Marks Act 1994.

    All the circumstances of a particular case would be relevant. However, the court had to decide whether the applicant’s knowledge was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.

    Court of Appeal
    Published August 19, 2004
    Harrison v Teton Valley Trading Co Ltd

    “The Times” 19th August 2004