Laytons (Nigel Parnell and Richard Harrison) has successfully resisted an appeal to the General Court of the European Union against a finding that the registration of a mark “TORNADO” for boats and vessels was invalid because it was done in bad faith (see Tornado Boats International ApS  v. European Union Intellectual Property Office, David Haygreen Intervening Case T-167/20).

Essentially, Laytons’ client, Mr Haygreen had been involved for many years in the construction and repair of rigid inflatable boats (RIBs) under the unregistered mark “TORNADO”.

The applicant, a Danish company, had entered into a commercial relationship with Mr Haygreen for the import and sale in Denmark of “Tornado” RIBs.  The directors of the applicant had also subsequently entered into a business arrangement with Mr Haygreen in which they assisted with his business with a view to taking over full management of the business and the rights to the sign “TORNADO”.

No final deal was signed and ultimately the parties’ relationship broke down. Despite this, the applicant contended that a de facto deal had been done which entitled him to register and own the mark.

However, this was not proved and the General Court found that the Board of Appeal of EUIPO had been entitled to find that the registration was made in bad faith because the applicant was aware that there was in fact no concluded transaction and that Mr Haygreen did intend to retain rights.

Therefore, in the light of all the circumstances, the application for registration departed from accepted principles of ethical behaviour or honest commercial and business practices with the intention of undermining the interests of third parties. Further the application made without prior notice was a “concealed act”.

In these circumstances, the registration of the mark “TORNADO” by the applicant was correctly found to have been made in bad faith.

In summary, wanting something to be so does not make it so and control can be genuinely taken back.

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