5. Bad Faith

Section 17(2) of the Act states:

The Commissioner must not register a trade mark if the application is made in bad faith.

The Act does not specifically define what is meant by “bad faith”.

“Bad faith” is likely to cover issues of ownership and intention to use the mark.⁴⁸ Both of these issues are more likely to be raised by a third party in opposition proceedings than by an examiner in the course of examining the application.

As the expression “bad faith” has ethical overtones and implies dealings that fall short of accepted business practice, IPONZ would only raise concerns under section 17(2) of the Act in exceptional circumstances.

Examiners may raise concerns that a mark is not registrable under section 17(2) of the Act if it seems very likely that the applicant is not the owner of the trade mark that is the subject of the application. This situation would usually only arise where the trade mark concerned is well known as being the trade mark of a particular company or individual, and where there is no apparent relationship between the applicant and the known owner of the trade mark.

Footnote

⁴⁸ See the discussion in Kerly’s Law of Trade Marks and Trade Names, 13th edition, 2001 at pages 210-225.