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The Trade Marks and Designs Registration Office of the European Union
You are here: Home > About OHIM > OAMI-ONLINE - Newsletter 06 - 2011 - Bad faith claim over “Lion” mark rejected
A Singapore-based financial services company has failed in its attempt to have the “Lion” Community trademark registered by a UK firm working in the same sector overturned on the grounds of “bad faith”.
Lion Capital LLP, based in London, registered the word mark “Lion” in 2008 for financial services in class 36. The invalidity applicant, Lion Global Investors Limited, based in Singapore, claimed that the parties had been in dispute concerning their marks, “Lion Capital” and “Lion Global Investors” respectively, on a worldwide basis, including two opposition proceedings before the Office.
The Singapore company claimed that the sole reason for the CTM applicant filing the CTM was to use it in order to interfere with the invalidity applicant’s legitimate interests in the use of its “Lion” marks in the European Union in relation to financial and investment services.
The invalidity applicant also said the CTM proprietor had registered a “Lion” mark for class 36 in the UK which served as an earlier mark in opposition proceedings initiated against an application for a Community trade mark by the invalidity applicant, but that the opposition was withdrawn after they requested evidence of genuine use.
To this end, the filing for the CTM only served to initiate a new grace period for non-use in respect of the sign “Lion”. In addition, while the CTM proprietor had formerly focused its registrations on the mark “Lion Capital”, the CTM proprietor applied for the CTM only after a) the trade mark issues between the parties arose, b) the CTM proprietor commenced preparations to rebrand its corporate name to Lion Global Investors Limited and use its new trade mark “Lion Global Investors” and c) after the invalidity applicant filed applications in the UK and the European Union for the mark “Lion”.
In summary, the invalidity applicant said that its use and registration of the “Lion” marks for services in class 36 was a legitimate commercial activity, based in part on its national heritage (Singapore, where the invalidity applicant is based, being known as the Lion City), that it had used “Lion” in its present and former company names and that this did not interfere with any trade mark rights in “Lion Capital”. As to the prior use, the invalidity applicant states that it was founded in part by Straits Lion Asset Management Limited and that its 70%-owner, the Great Eastern insurance group, had used a lion device for over 100 years.
In response, the CTM proprietor stated it had used its “Lion” marks on an international scale since May 2005 and since then had acquired various trade marks in the European Community for the marks “Lion”, “Lion Capital” and the “Lion” logo. Contrary to the invalidity applicant’s contention, the marks were used interchangeably including the “Lion” mark on its own which constituted the very essence of its brand. The UK company provided evidence supporting its statements drawn from its website, press articles, and letters.
Ruling on the case, the Cancellation Division said that while there was no precise legal definition of the term “bad faith” any finding must be based on the intentions of the applicant when filing the Community trade mark and whether such intentions could be qualified as “dishonest”. In addition, the burden of proof in such cases rested on the invalidity applicant as good faith was presumed until the opposite was proven.
The Cancellation Division said it was undisputed that the CTM proprietor changed its company name to “Lion Capital LLP” in May 2005. Nothing indicated that the adoption of this company name was in any way related to or inspired by the invalidity applicant’s use of the sign “Lion”. Furthermore, the invalidity applicant seemed to have adopted its current company name with the term “Lion” positioned at its beginning only after May 2005. The fact that both parties adopted the sign “Lion” in 2005 therefore appeared to be coincidental.
With regard to the invalidity applicant’s claim that the CTM proprietor used the term “Lion” only as a company name but not as a trade mark, it was common practice for companies to register their name or parts of it as trade marks. Furthermore, whilst the purpose of a company name was not, of itself, to distinguish goods or services, in particular as far as services such as financial services are concerned, it was often difficult, legally and practically, to separate one type of use from the other.
The Cancellation Division said it was not convinced that the application for the CTM merely served as a legal instrument against third parties’ use of the sign “Lion” and there was no convincing evidence that the mark had been registered as a ploy to avoid the consequences of a lack of genuine use of the prior UK mark.
“Overall, given the legitimate interest on the part of the CTM proprietor to apply for the CTM, the evidence provided by the invalidity applicant does not suffice to have the application of the CTM categorised as an attempt to compete unfairly with the invalidity applicant or to misuse a legal position gained by the CTM registration to circumvent the requirements of genuine use. Therefore, the invalidity request based on Article 52(1)(b) CTMR is rejected”, the Cancellation Division concluded.