Our partner Sandra Strittmatter and her associate Nina Thiery share their insight into the assessment of a trademark applicant’s bad faith.
On April 8, 2021, a class 35 service mark application was filed in France for the phrase “Vite Ma Dose”.
On December 22, 2021, COVIDTRACKER, the French non-profit that developed the website “Vite Ma Dose” to facilitate finding a Covid vaccination appointment, sought a declaration of invalidity of that trademark, contending that it was contrary to public policy and that the application had been filed in bad faith.
On December 8, 2022, the French patent office (Institut National de la Propriété Industrielle, or INPI) determined that the applicant had acted in bad faith and declared the trademark invalid. It rejected the claim that the trademark was contrary to public policy, since the plaintiffs had presented no evidence of a violation of public policy having occurred as a result of the filing of the trademark application at issue.
In determining that the applicant had acted in bad faith, the French patent office noted that:
- the applicant knew, before filing the application, that the mark “Vite Ma Dose” was already being used by the plaintiffs, given not only the extensive nationwide media coverage which the website received upon being launched, at a time when Covid vaccination was a major concern for a significant share of the French population, but also that the applicant had exchanged with one of the plaintiffs about the website;
- the applicant had indeed sought to deprive others of the use of a mark necessary to their business, since they:
- filed the trademark application at issue a mere few days after the launch of the “Vite Ma Dose” website;
- copied the “Vite Ma Dose” home page developed by one of the plaintiffs to their own website a few days before filing the disputed trademark application;
- booked the domain name “vitemadose.fr” a mere few days after the launch of the “Vite Ma Dose” website and sold it ten days later.
The French patent office found that this last element, combined with the others, proved that the applicant had booked the domain name and filed the trademark application with no real intent to use them, but merely to profit from the reputation of the website developed by the plaintiffs.