The answer is nearly always: put it in writing!

The UKIPO has issued a trade mark opposition decision (O/0740/24) revolving around the Bluebird craft used by Donald Campbell.  Mr Campbell was a British speed record breaker who attempted to push his craft to over 300mph on 4 January 1967. The Bluebird craft somersaulted during the attempt leading to Mr Campbell’s death.  The wreckage was recovered decades later and rebuilt by a group including Bill Smith.

In 2021 Mr Smith applied for a UK trade mark for The Bluebird Project logo, which was opposed by Mr Campbell's nephew, Donald Wales.  There is a separate dispute over the ownership of the restored Bluebird craft.

The opposition relied on a number of grounds, but of particular interest is the objection under section 3(6) that the application was filed in bad faith, stemming from a dispute about the nature of the relationship of the parties involved in the recovery and restoration of the Bluebird craft.

Under section 3(6), the opponent claimed that: “The Applicant’s attempt to secure rights in the trade mark BLUEBIRD through the trade mark application in question involves questionable behaviour and sharp practice. The Applicant claims partial ownership of the Bluebird K7 water speed vehicle that had been gifted to The Ruskin Museum by the family of the [sic] Donald Campbell. The Applicant’s claim to entitlement of the trade mark applied for rests on such claim to ownership, which is disputed by both The Ruskin Museum and the Opponent.”

Section 3(6) of the UK Trade Marks Act states “A trade mark shall not be registered if or to the extent that the application is made in bad faith.”  Proving an allegation of bad faith is a high hurdle and requires some dishonest intention or other sinister motive on the part of the applicant.  It is regarded as conduct which departs from accepted standards of ethical behaviour or honest commercial and business practices. Good faith when filing an application is presumed unless the contrary can be proved.

Mr Smith had used The Bluebird Project logo on a range of items, including merchandise such as caps, without objection from Mr Wales or anyone else involved with the project. Mr Smith relied on this lack of objection to his use during the opposition, but the fact that a party has not objected to use before an application is filed does not preclude them from filing an opposition. The decision notes that “[a] party’s calculation about whether it is worth making an objection is likely to be based not just on how a mark is being used now but on how it could fairly be used in the future”.

There was no evidence from either party that any formal contract was entered into. There was a letter that referred to “operating under a ‘trust’ and bond of word and I know each party will honour this trust.” However, there was nothing formal setting out the position between the parties involved in the project and any claim to ownership or remuneration for providing both time and spare parts.

Ultimately, based on the evidence filed bad faith was found as Mr Smith failed to rebut the prima facie case of bad faith, and the application has been refused.

The decision is a reminder that a written document setting out the position between parties to a project is extremely important to protect monetary and time investments. The decision also serves as a reminder that evidence is key.  Whilst he was successful, Mr Wales’s evidence of use was found to be lacking, being described as “patchy and largely undated” leading to the claim to a reputation and passing off right to fail.  Whilst the opposition succeeded overall in this case, to give all grounds a good chance of success reliable dated evidence is important.

Mr Smith’s evidence had flaws too, filing exactly the same photographs as two separate exhibits over two witness statement, claiming in one statement that they were taken in 2014 and another claiming they were taken in 2009; a discrepancy which led the Hearing Officer to “treat these parts of the witness statements with some caution”.