• IN THE UK OFFICE

    Ivana Turns Up Trumps

    Ivana Trump is famous for being famous. Although her early career as a skier and a model were modest steps towards her present iconic status, the career move that propelled her meteorically towards the Class A personality list was her marriage to the American businessman Donald Trump. In fact, it has been said that Mr Trump’s greatest achievement is not Trump Tower or Trump Casinos but Ivana.

    Since her marriage ended in a well publicised divorce, Ivana has traded extremely successfully on her fame. She owns companies which manage her appearances (House of Ivana) and sell approved products such as jewellery, cosmetics and clothes under the Ivana trade mark (Ivana Inc). These sales occur principally in the US.

    Mr Suleman Tahir is not famous for being famous. However, he is gaining a reputation for filing trade marks that turn out to be the property of third parties. Over the past few years, he has filed a number of applications for Walt Disney film characters, including UK2016252 for Percy the Dog, an application that was successfully opposed by Disney. In addition, Mr Tahir has also sought to register Santa Claus and Visachi (no doubt pronounced Versace).

    In 1995, Mr Tahir’s attention was attracted by another potential area of exploitation and he filed two UK applications in Classes 3, 14 and 25. One of these applications, which was subsequently allowed to lapse, was for Ivana Trump. The other application was for Ivana. This latter application proceeded to registration.

    In April 1997, House of Ivana sought to cancel Mr Tahir’s registration, primarily on the ground that it was filed in bad faith (Section 3(6)). The evidence put in by the House of Ivana established that the name Ivana Trump was well known in the UK prior to Mr Tahir’s filing date. However, it did not establish any reputation or goodwill in Ivana in this country before that date. The evidence also drew the UK Office’s attention to Mr Tahir’s earlier UK trade mark applications.

    The Hearing Officer decided that Mr Tahir had acted in bad faith and consequently declared his registration invalid. He made the following observations,

    • Quoting from Gromax Plasticulture v Don & Low Nonwovens (1999 RPC 367), "…bad faith … includes dishonesty and … some dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area being examined".

    • "Bad faith" behaviour includes conduct that is not fraudulent or illegal, but may be regarded as unacceptable or less than moral in a particular business context.

    • The test for bad faith is an objective one. The fact that the applicant for a trade mark believes he is acting in good faith is irrelevant. The morals or values of the applicant may be different to those of reasonable commercial people.

    • It was clear from the evidence that the trade mark Ivana was taken from the name Ivana Trump. Mr Tahir could have had no bona fide basis for his application to register the mark Ivana Trump, given the unusual nature of the name as well as the fame of Ms Trump. The prima facie conclusion must therefore be that Mr Tahir also had no proper basis to apply for Ivana.

    • Even though Mr Tahir’s conduct was not dishonest, it amounted to bad faith under Section 3(6) of the 1994 Act.

     

     

    Comment

     

    The UK Office treats the charge of bad faith as a very serious one. In the writer’s opinion, it is often not such a serious charge, it is merely a suggestion that the applicant or trade mark proprietor has acted either in an opportunistic manner or in a way that could be viewed as sharp practice. This could and, in the writer’s view, should include the case where the applicant or proprietor has made a claim to an unjustifiably wide specification of goods or services. Even the most reputable of trade mark owners do this on occasion. One of the reasons for Section 3(6) should simply be to prevent them getting away with it.

    The case reported above also shows that, if a UK applicant/proprietor has consistently filed for word marks that are in the ownership of third parties outside the UK or for device marks, the copyright ownership of which lies with third parties, it may be possible to use this evidence to sustain a bad faith argument. It is therefore always worth reviewing the trade mark portfolio of an applicant/proprietor before beginning an opposition or an invalidity action.