A recent opposition before the UK Trade Marks Office (TRUMP TV; O-409-18) involved DDTM Operations LLC (“DTTM”), a US company linked to Donald Trump, against “Trump International Ltd”, a UK company which has the notorious Michael Gleissner registered as its sole Director.

 

Trump International Ltd, the applicant, filed a UK trade mark application for TRUMP TV with respect to various services in classes 38 (including telecommunications and broadcasting services), and 41 (including the production of radio and television shows, and entertainment services). DTTM Operations LLC (“DTTM”) opposed the application on the basis of earlier registrations for TRUMP (both word and logo marks).

 

DTTM submitted that the company purporting to be the owner of the application did not exist on 30 October 2016, when the filing was made. In fact, Trump International Ltd was incorporated on 31 October 2016. Accordingly, their grounds under section 3(6) stated that the applicant:

 

• did not legally exist at the filing date and so firstly, had misled the Registrar as to its ability to hold the application
• could not be said to have a bona fide intention to use the mark
• had as its sole Director Michael Gleissner (“G”), a notorious filer of numerous disparate IP rights (which again raised the question of true bona fide intention to use)
• could not fail to be aware of the reputation of the TRUMP trade mark, meaning the application was made to take advantage of the reputation, to damage it, or otherwise disrupt the legitimate interest of the DTTM
• made an application which formed an “instrument of fraud” under Glaxo v Glaxowellcome Ltd [1996] FSR 388.

 

DTTM’s evidence included details of an earlier set of cases involving G, who brought cancellation actions against several Apple Inc. registrations. These were struck out as an abuse of process and a costs award in excess of £38,000 was made against him. The applicant’s representatives attempted to distinguish that case on the basis that they concerned G in his personal capacity whereas here he was a director of the applicant company. The applicant also claimed that the application to set up a company had actually been filed on the same day as the trade mark application. Otherwise, the applicant’s only defence to the bad faith grounds was that it was under no obligation to show an intention to use the mark at issue, and that if and when it became registered, it would have five years in which to commence use.

 

The Hearing Officer found that even though G was not acting in his personal capacity in filing the current application, he was clearly the controlling force behind the company, and so there was no reason to distinguish this case on the facts. In the ALEXANDER decision (O/036/18) which also involved G, it was noted that an overall assessment should be made which takes account of all relevant factors, including the intention of the applicant when the trade mark filing was made.

 

The Hearing Office considered it disingenuous of the applicant to deny that there was widespread public awareness of the Trump name at the time the application was filed (a few months before Mr Trump became US president, to say nothing of the Trump Tower, and various investments in luxury resorts, including the Turnberry golf resort). Further, he found that the filing was one of a series of abusive registrations made in an attempt to appropriate a famous third party mark. Hence, it was unlikely that the application was made with a bona fide intention to use the mark, rather it was more likely that it was done with the intention of gaining some advantage deriving from the notoriety of Mr Trump.

 

Accordingly, it was found that the applicant had acted below the standards of acceptable commercial behaviour judged by ordinary standard of honest people, and the application would be refused in its entirety for bad faith. Compensatory costs awards were available in cases of unreasonable behaviour, whilst it did not follow that a bad faith case necessitated an off -scale award, in this case there were a number of aspects of the behaviour of the applicant which together warranted an off-scale award. This was made for in excess of £15,000 which included professional fees for both UK and US attorneys.

 

This sensible decision offers at least some hope to trade mark owners who become involved in disputes involving Michael Gleissner-owned companies before the UKIPO. The level of the award of costs made by the Hearing Officer is taken from a limited set scale and is typically within the region of £1,500 to £2,000. Some flexibility is built in to the scale of costs, provided “one side has behaved unreasonably” and the good news is that the UKIPO now appears to be taking a harsher view of his mysterious activities.