Trump International Ltd v DTTM Operations LLC

In a trade mark appeal, a finding of bad faith is a multifactorial evaluative judgment. An appellate court should intervene only for a distinct and material error of law or principle. Evidence of similar applications for well-known third-party marks may be probative, but it cannot alone establish bad faith in every application. The evidence must be assessed in the context of the particular application. Where it establishes a prima facie case, the applicant may need to provide evidence explaining its purpose and rebutting the inference of bad faith. The structured questions used in Alexander are useful, but they do not replace the statutory test and need not be used in every case. A registrar may strike out proceedings brought for an ulterior and improper purpose as an abuse of process, exercising that power cautiously.

Trump International Ltd appealed from a decision of the Hearing Officer refusing its application to register TRUMP TV for communication, broadcasting, entertainment and education services. The opposition relied principally on section 3(6) of the Trade Marks Act 1994, alleging bad faith, and also relied on sections 5(2)(b), 5(3) and 5(4).

The Hearing Officer found that the application formed part of a pattern of applications for famous third-party marks, that the applicant had not provided evidence answering the allegations, and that the application was made below the standards of acceptable commercial behaviour. The appeal challenged that conclusion, the use of similar-fact evidence, the failure to determine the other grounds, and the refusal of a stay pending Sky plc v Skykick UK Ltd. The appellant also sought to adduce further evidence.

1. Appeal dismissed. The Hearing Officer’s conclusion that the application was filed in bad faith disclosed no distinct and material error of law or principle. Findings of bad faith are multifactorial value judgments and attract appellate restraint.
2. The allegations of actual or apparent bias were unsustainable. Applying the objective test, a fair-minded and informed observer would not conclude that there was a real possibility of bias. The Hearing Officer was entitled to consider the evidence concerning companies controlled by the same individual.
3. Similar-fact evidence was admissible under the two-stage approach in O’Brien v Chief Constable of South Wales Police: it had to be potentially probative, and its admission had to accord with the overriding objective. Multiple applications for well-known third-party marks could make bad faith more probable, but the pattern could not itself sustain a finding against every application. Here, the evidence was relevant and significant in the context of an application plainly associated with a famous person with whom the applicant had no connection.
4. The evidence established a prima facie basis for bad faith. The applicant’s failure to file evidence or provide a factual explanation justified the inference that the application was intended to obtain an advantage from the reputation of Mr Trump or interfere with the opponent’s legitimate interests. The Alexander questions provided a useful analytical structure, but they were not a substitute for section 3(6) and were not mandatory in every case.
5. The Hearing Officer was not required to decide the other grounds after finding bad faith. It would nevertheless have been sensible to state brief conclusions on them, particularly to avoid remittal and delay if the bad-faith finding were overturned. The complaint therefore failed.
6. The stay application could not be renewed after an earlier refusal. In any event, the Skykick reference was not directly relevant because the decision rested on dishonest motivation, not solely on an absence of intention to use.
7. Fresh evidence was refused. It could have been obtained with reasonable diligence, would not probably have affected the result, was not shown to be credible, and would have required a rehearing with cross-examination and disclosure. The interests of finality therefore weighed strongly against admission.
8. The Registrar may strike out proceedings brought for an ulterior and improper purpose as an abuse of process, cautiously and particularly where a prima facie case of bad faith is unanswered. Applications for well-known third-party marks with no apparent connection require explanation and justification.

• High Court (Chancery Division): appeal from the Hearing Officer’s decision of 4 July 2018 refusing the TRUMP TV application under section 3(6) of the Trade Marks Act 1994; appeal dismissed.
• Earlier procedural decision: an application for a stay pending the Sky plc v Skykick UK Ltd reference had been refused by a deputy High Court judge on 17 December 2018 and was not appealable in these proceedings.