A company which supplies pay-as-you-go electricity in Ireland has failed in its attempt to register PINERGY as a trade mark in Ireland. The company in question was PrePayPower Limited (the “Applicant”) and it applied to register PINERGY as a trade mark for a variety of power energy supply services in International Class 39.
On the same day, the Applicant also filed to register “PrePayPower” (its own successful brand) and BUDGET ENERGY, which was the brand of a company from Northern Ireland that had plans to enter the market in the Republic of Ireland where the Applicant was based.
The Applicant’s application was formally challenged on the grounds of ‘bad faith’ by New Measured Power Limited, (the “Opponent”), an Irish company, which was also in the business of supplying pay-as-you-go electricity in Ireland.
Significantly, the Opponent had been using PINERGY since 15 October 2012 as a Registered Business Name in Ireland, a year before the Applicant had filed its trademark application. This was a fact that the Irish Patents Office held the Applicant must have been aware of at the time of filing. In addition to its trade mark application, the Applicant had also registered the domain name “pinenergy.ie”, a month after the Opponent had registered “pinergy.ie” as a domain name.
Notably, the Opponent had not registered PINERGY as a trade mark in Ireland, a fact that was capitalised on by the Applicant in its submissions to the Irish Patents Office.
In finding for the Opponent, the Hearing Officer of the Irish Patents Office first summarised the law on ‘bad faith’ by stating:
In order for bad faith to be proven, some misconduct on the part of the Applicant must either be shown by evidence adduced by the Opponent or it must be an inescapable inference drawn from the circumstances of the application. In today’s world what constitutes dishonesty for one businessperson might be perfectly acceptable business behaviour for another. So, I will be guided by the word “reasonable” and apply the standard that reasonable people do not attempt to take for themselves that which is the property of another.
In inferring from the facts of the case, the Hearing Office held that there was no conclusion on the facts other than a finding of bad faith on the part of the Applicant. The Applicant had merely filed for PINERGY so as to prevent the Opponent, its competitor, from marketing a product under the same name. Moreover, the Applicant had applied to register a sign without ever intending to actually use it. The Hearing Officer’s decision was fully in line with the ruling from the European Court of Justice ruling in Chocoladedefabriken Lindt & Springli AG v Franz Hauswirth GmbH, Case C-529/07, which is one of the leading cases in the European Union on ‘bad faith’ in the context of trade mark law.
The decision of the Irish Patents Office highlights the requirement under Irish Trade Mark law that, when you file a trade mark application in Ireland, you must confirm, on filing, that you have used or have a bona fide intention of the putting the Sign, you are seeking to register, into use. If your application is subsequently challenged on the grounds of bad faith, you will need to adduce evidence as to how you came up with the trade mark in question in order to satisfy the Irish Patents Office that your affirmation on filing was genuine.
The case is also a salutary lesson for those who delay in filing to register their desired brand as a trade mark, especially if pre-filing searches reveal that the trade mark is free for use and registration. Had the Opponent applied to register PINERGY before the Applicant, it is probable that it would have deterred the Applicant from subsequently filing for the same mark or would have at least successfully opposed without the need for filing evidence (on the basis of an identical mark for identical services); thereby avoiding long drawn out proceedings.