Trump International loses High Court trade mark appeal

Trump International Limited. v. DTTM Operations LLC v Comptroller General of Patents, Designs and Trade Marks [2019] EWHC 769 (Ch)

April 2019

The High Court of Justice has upheld a UK Intellectual Property Office (UKIPO) decision in relation to a trade mark for “TRUMP TV” filed in bad faith.

Bad Faith

As set out in section 3(6) of the Trade Marks Act 1994 – “A trade mark shall not be registered if or to the extent that the application is made in bad faith”.

A trade mark application may be considered to have been filed in “bad faith” if the applicant had no intention of using the trade mark to distinguish its goods from those of other traders. Marks filed as blocking strategies or to demand money from the rightful IP owners can be considered “bad faith” applications.

IPO Decision

In October 2016, an application for the mark “TRUMP TV” in classes 38 (for among other things telecommunication services) and 41 (for the production of radio and TV shows and more) was filed by businessman Michael Gleissner, in the name of “Trump International Limited”. The mark was opposed by DTTM Operations LLC, who manage the intellectual property rights for Donald Trump.

DTTM Operations LLC was successful on the grounds of bad faith, with Trump International being ordered to pay costs of £15,100. In the words of the UKIPO Hearing Officer, the conduct of Michael Gleissner / Trump International in previous matters illustrated;

“a flagrant degree of cynicism on the part of the Applicant, where other related companies have demonstrated a pattern of similar behaviour…….In considering whether off-scale costs are here warranted, I particularly bear in mind the well-evidenced pattern of abusive behaviour on the part of Mr Gleissner and his related companies as shown, for example, in the Apple cases referenced above - which decisions were published well in advance of the current opposition.”

High Court Appeal

The decision was appealed by Trump International who argued that the hearing officer “erred in law or in principle in failing to make any findings in relation to the other grounds of opposition” (that he had purchased the domain names ‘trump.org’ and ‘trump.tv’ in 2017, claiming they were to be used for a satirical website’), and that evidence of third parties (such as articles from the ‘World Trademark Review’, in the words of the UKIPO -  “a prominent trade publication for the trade mark attorney profession”) had been relied upon that damaged the personal reputation of the appellant – in particular that articles were adduced implying a pattern of bad faith filing on the part of Trump International.

The appeal was dismissed, with The Hon Mr Justice Henry Carr addressing the bad faith nature of the application;

“Mr Gleissner's assertion of an intention to use the mark is, in my judgment, not credible……the evidence gives no details as to how the business would operate, how revenue would be generated, what markets and demographic would be addressed, nor in what geographical regions or on what platforms the service would operate. Nothing is said about when the planned business was or would be launched.”

Comment

An interesting fact of this case was that evidence demonstrating a pattern of bad faith was allowed by the UKIPO to demonstrate that the current filing by the applicant had been applied for in bad faith.

Clients should therefore be mindful of the possibility that multiple applications rejected on the grounds of bad faith may begin to count against them when filing future applications, although of course the scale of the Applicant’s activities in the current case was extreme.

Trade mark attorneys at HGF work hard to ensure that all clients are given detailed advice to ensure they are fully aware of the potential outcomes and ramifications of any trade mark applications.

Link to 2016 IPO Decision -  https://www.ipo.gov.uk/t-challenge-decision-results/o40918.pdf

This update was prepared by HGF IP Solicitor Chris Robsinon.  If you would like further advice on this or any other matter, please contact Chris.  Alternatively, you can contact your usual HGF representative or visit our Contact page to get in touch with your nearest HGF office.

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