Is it Bad Faith to Apply for a Trade Mark You Don’t Intend to Use?

Abstract

European trade mark law appears to have a growing influence on the interpretation of New Zealand’s Trade Marks Act 2002 (2002 Act). As such, the recent decision of the Court of Justice of the European Union (CJEU) in Sky Plc v SkyKick will be of significant interest. This article outlines the context of the SkyKick litigation and analyses the CJEU’s approach to determining whether it is bad faith to file a trade without a genuine intention to use. It then evaluates the judgment’s potential impact on New Zealand trade mark law and practice concerning intent to use and bad faith. The article explains how, given the other ways the 2002 Act regulates the requirement for an applicant to have an intention to use the trade mark applied for, the SkyKick judgment may have a more pronounced influence on the interpretation of other statutory provisions. The article argues that such developments may further complicate New Zealand trade mark law’s approach to an intention to use requirement.