“TAPOUT”

A person is acting in bad faith if, at the time they apply to register a distinctive sign, they know, or should have known that this sign is identical or similar to the distinctive sign used by a third party abroad, to the extent that this could give rise to confusion with the sign for which registration is sought in the local market. Any third party that later applies for the granted registration to be voided bears the burden of proving this knowledge existed.

This knowledge may be proven, for example, if the third party, who is the owner or licensee of the distinctive sign used abroad, proves that the applicant (in the local market) had been its partner, distributor or marketer, or became aware of the distinctive sign that the third party uses abroad due to any other contractual relationship. The existence of a prior relationship between the third party and the applicant is proof that the applicant knew of the distinctive sign.

If the distinctive sign used by the third party abroad is well known or renowned, the competent national office must take this into account when assessing the prior knowledge that demonstrates bad faith. If the distinctive sign used abroad was renowned, it may not be necessary to prove there was a prior relationship between the applicant and the third party. If the distinctive sign used abroad was well known, it may be enough to prove that the applicant was part of the pertinent or relevant sector (of manufacturers, distributors, marketers, clients, consumers and so on) that should have been aware of the well-known sign.

In principle, this prior knowledge is enough to prove that bad faith existed. There is no requirement to prove that the applicant intended to prevent the aforementioned third party from using their distinctive sign in a member country of the Andean Community. It is therefore unnecessary to check whether the applicant intends to impede the foreign distinctive sign from entering the local market.

The competent national office may reject an application to void the registration of a mark for alleged bad faith if:or (a)

notwithstanding proof of prior knowledge, the distinctive sign used previously abroad was ordinary (that is, it was not well known or renowned) when the application for local registration was lodged; and

there is no competitive connection between the products or services that are distinguished by the foreign sign and the products or services that are distinguished by the local sign.

Another indication of bad faith that may be considered by the competent national office is the opportunistic behaviour of the applicant for the mark. If this is a person who is seeking to monopolise various existing marks abroad without actually trading with them in the local market, this is a relevant sign of bad faith that may indicate that the sole purpose of obtaining the local registration of a variety of marks that already exist abroad is their intention to sell them on to foreign owners when these owners are interested in the local market.