Integrity in Filing: What Constitutes Bad Faith under Section 7(6)

The Singapore trade mark system is built on the expectation that applicants file in good faith — with a genuine intention to use the mark and an honest basis for claiming it. Section 7(6) of the Trade Marks Act provides a safeguard against abuse: a trade mark shall not be registered if, or to the extent that, the application was made in bad faith. This ground can lead to outright refusal of an application or, if the mark is already registered, to its subsequent invalidation.

What Is Bad Faith?

The Trade Marks Act does not define “bad faith.” However, Singapore courts have developed the concept through case law. The Court of Appeal in Valentino Globe BV v Pacific Rim Industries [2010] 2 SLR 1203 provided a comprehensive review of the applicable principles.

Bad faith refers to conduct by the applicant that falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area of trade. It encompasses dishonesty, but also extends to conduct that, while not necessarily dishonest in the criminal sense, is commercially unacceptable or unconscionable.

The Combined Test: Objective and Subjective

The test for bad faith has both a subjective and an objective element, as established in the English case of Gromax Plasticulture v Don & Low Nonwovens and adopted by the Singapore courts. The tribunal must consider:

• What the applicant knew at the time of filing (subjective element).
• Whether that knowledge, combined with the act of filing, falls below acceptable commercial standards as judged by reasonable persons with experience in the relevant trade (objective element).

The key date for assessing bad faith is the date of the application. The applicant’s state of mind and knowledge at that specific moment are what matters.

Common Scenarios of Bad Faith

Trade Mark Squatting

One of the most frequently encountered forms of bad faith is trade mark squatting — filing a mark that the applicant knows belongs to another party, typically a foreign brand that has not yet entered the Singapore market. The squatter’s objective is usually to either block the legitimate owner or to extract a payment for transferring or licensing the mark.

If the applicant was aware of the foreign brand’s existence and reputation at the time of filing, and had no legitimate commercial reason for choosing an identical or highly similar mark, this can constitute bad faith.

Filing to Block a Competitor

Filing a trade mark not to use it but to prevent a competitor from entering the market is another recognised form of bad faith. If the applicant has no genuine intention to use the mark in relation to the specified goods or services, and the filing is purely strategic — aimed at creating an obstacle for a rival — this falls below acceptable commercial standards.

Filing by a Former Agent or Licensee

Where a former agent, distributor, or licensee files the principal’s mark in their own name without authorisation, this may constitute bad faith. The former relationship gives the applicant knowledge of the mark and its ownership, and filing without consent exploits that prior access.

Overly Broad Specifications Without Intent to Use

While the CJEU’s SkyKick ruling is not directly binding in Singapore, the principle that filing for goods or services with no genuine intention to use the mark can constitute bad faith is consistent with the general approach under Section 7(6). Filing for entire class headings purely to maximise the scope of a blocking position — without any commercial plan to use the mark across those goods — carries risk.

The Burden of Proof

The burden of proving bad faith rests on the party alleging it — typically the opponent in opposition proceedings or the applicant in invalidity proceedings. Bad faith is a serious allegation and must be supported by clear and convincing evidence. Mere suspicion or speculation is not sufficient.

However, direct evidence of the applicant’s state of mind is rarely available. In practice, bad faith is often inferred from the surrounding circumstances — the applicant’s knowledge of the earlier mark, the degree of similarity, the absence of a legitimate commercial explanation, and the timing of the filing.

Consequences of a Bad Faith Finding

If bad faith is established, the consequences are severe:

• At the application stage: The mark will be refused registration under Section 7(6).
• After registration: The mark can be declared invalid under Section 23(1), with the registration deemed never to have been made.
• Partial invalidity: Under Section 23(7), if bad faith exists only in respect of some goods or services, the registration is invalidated only to that extent.

There is no time limit for filing an invalidity action based on bad faith — unlike other grounds, which may be subject to a five-year limitation period.

Strategic Implications

• For applicants: File only marks you intend to use, and only for goods or services you genuinely plan to offer. Maintain records of your commercial plans at the time of filing.
• For opponents: If you suspect a filing is made in bad faith, gather evidence of the applicant’s knowledge of your mark, the timing of their filing, and any pattern of speculative or blocking behaviour.
• For foreign brand owners: If your brand has not yet entered Singapore, file early. A defensive filing in your own name is far cheaper than fighting a squatter.

Common Mistakes

• Filing a mark known to belong to another party: Even if the other party has not registered in Singapore, knowledge of their mark combined with an unjustifiable filing can constitute bad faith.
• Assuming bad faith is hard to prove: While the burden is high, circumstantial evidence — such as prior business dealings, obvious copying, and absence of a legitimate explanation — can be persuasive.
• Filing speculatively without documenting intent: If your filing is later challenged, you will need to demonstrate a genuine commercial rationale for choosing the mark and the goods or services covered.

Key Takeaway

Section 7(6) ensures that the Singapore trade marks register is not used as a tool for commercial opportunism. Applicants must file with a genuine intention to use the mark and an honest basis for claiming it. Filing to squat, to block, or to extract value from another party’s brand falls below the standards of acceptable commercial behaviour and will be met with refusal or invalidation. The best protection against a bad faith challenge is simple: file what you intend to use, and use what you file.