Trump TV Story is not fake news
Dr Stephen James writes again for Ward Trade Marks. Stephen is a past president of CITMA, and a leading practitioner with almost 40 years’ experience in UK and EU trade mark law.
This time he reviews a UK IPO trade mark opposition case where a trade mark application for TRUMP TV was alleged to be in bad faith.
In a recent UK trade mark opposition (O-409-18), an application for TRUMP TV was refused by the UK Trade Mark Office on the ground of bad faith. On 30 October 2016, a UK company, Trump International Ltd, applied to register the trade mark TRUMP TV for a range of services in Classes 38 and 41. The application was opposed by DTTM Operations LLC, a New York based company. DTTM is the vehicle used by US President Donald Trump (and his family) for their Trump branded enterprises in real estate, golf courses, etc.
The opposition was based on a number of grounds, including those relying on DTTM’s prior trade mark rights in the name Trump and marks containing that name. For reasons that will become clear however, the opposition was decided in DTTM’s favour on the basis of bad faith (Section 3(6) of the Trade Marks Act 1994).
The opponent’s evidence contained the usual information seeking to establish the goodwill and reputation of DTTM in Trump trade marks in the UK. In addition, however, they also provided details of the applicant (Trump International) and its guiding hand (Mr Michael Gleissner). Here are the juiciest bits:
- Mr Gleissner is the sole director of over 1000 UK companies (nearly all non-trading) and is also reported to be behind many other companies outside the UK.
- An article in World Trademark Review (dated 23 August 2016) identified Mr Gleissner’s links to a network of company names, internet domain names and trade mark applications and registrations. In addition, Mr Gleissner’s companies had filed numerous trade mark cancellation actions around the world.
- In a decision (O-15-17) dated 18 January 2017, the UK Trade Mark Office had struck out 68 non-use revocation actions filed by a Gleissner controlled company, against UK trade mark registrations owned by Apple Inc, as an abuse of process.
- Mr Gleissner’s companies had attempted on numerous occasions to register famous trade marks owned by third parties; marks such as Apple (for computers), EUIPO (for IP related services) and IPHONE (for apparatus for recording… sound or images).
- Further evidence of Mr Gleissner’s mis-use of the IP system gleaned from LinkedIn posts. This related, in particular, to another Gleissner controlled company, Bigfoot Entertainment.
On this basis, DTTM argued that the evidence showed a pattern of “bad faith” behaviour by Mr Gleissner and the companies under his control (including the applicant, Trump International). They also submitted that the UK application for TRUMP TV had been filed, just prior to the 2016 Presidential election, to take advantage of the reputation (of DTTM) in the Trump trade mark and potentially to damage that reputation and to disrupt DTTM’s legitimate interests in Trump.
The Hearing Officer (Mr Matthew Williams) accepted that a pattern of behaviour had been well-evidenced but that this, in itself, could not sustain a claim of bad faith on behalf of Mr Gleissner (and the applicant Trump International). However, according to Mr Williams, when such evidence was viewed in the light of the opposed application, an application for the distinctive name of an exceptionally well-known public figure (and businessman), the combination easily overcame the presumption of good faith and lead inevitably to a finding of bad faith.
In view of that finding, the Hearing Officer refused the application for TRUMP TV in its entirety on the ground of bad faith (Section 3(6)).
Appeal to the High Court
Mr Gleissner appealed against the adverse decision in TRUMP TV to the English High Court (Mr. Justice Carr; 2019 EWHC 769 (Ch)). A key question before the Court was whether or not the UK Hearing Officer had been correct to take into account the evidence of Mr Gleissner’s (and his companies’) other trade mark and related activities, including the filing of third party owned trade marks, the overzealous involvement in trade mark cancellation actions and the non-payment of costs orders.
The judge was generally happy with the approach of the Hearing Officer, although he thought that all of the grounds of opposition brought by DTTM should have been considered, not just the bad faith (Section 3(6)) ground. As far as the mark applied for (TRUMP TV) was concerned, Mr Justice Carr commented:
Trump International had applied to register a trade mark which was plainly associated with Mr (Donald) Trump, with whom it had no connection. That, of itself, required a very clear explanation to refute an inference of bad faith. The similar fact evidence was not mere rumour or supposition. It raised some very serious matters which required a detailed explanation and refutation in evidence.
Since no such detailed explanation or refutation was forthcoming from Mr Gleissner, Mr Justice Carr was happy to confirm the Hearing Officer’s decision and to maintain the refusal of the TRUMP TV application.
In another recent bad faith decision (Snoop International v Calvin Broadus, O-424-18), a UK trade mark application for SNOOP in Classes 14 and 26 was successfully opposed by the American rapper known as Snoop Dogg. Once again, the applicant (Snoop International) was controlled by Mr Gleissner and once again the application was refused on the ground of bad faith.
Trade Mark Trolls Beware
The activities of trade mark trolls have been a thorn in the side of both reputable trade mark owners and the trade mark authorities for many years. There are signs however that, in the UK at least, steps are being taken to inhibit their trade mark activities.
In the TRUMP TV case, for example, the Hearing Officer made a costs award of over £15,000 against Mr Gleissner’s company. Whilst one shouldn’t hold one’s breath regarding the payment of those costs, it does show that the relevant authorities are beginning to take such disruptive and destructive trolling very seriously.
Dr Stephen James
Ward Trade Marks
Ward Trade Marks conducts trade mark opposition proceedings before the UKIPO and the EUIPO.
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