Case No: HC 2016 001761
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY 
SHORTER TRIALS SCHEME
Royal Courts of Justice
The Rolls Building
7 Rolls Buildings
Fetter Lane
London
EC4A 1NL

Date: 08-11-2016
Before:

THE HONOURABLE MR. JUSTICE NUGEE

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Between:

	JAGUAR LAND ROVER LIMITED	
Claimant	
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BOMBARDIER RECREATIONAL PRODUCTS INC.	

Defendant	

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MR. MICHAEL HICKS (instructed by Mills & Reeve LLP) for the Claimant

MR. TOM ALKIN (instructed by Bristows LLP) for the Defendant

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Transcript of the Stenographic Notes of Marten Walsh Cherer Ltd.,
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Chancery Lane, London WC2A 1HP. 
Telephone No: 020 7067 2900.  Fax No: 020 7831 6864
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JUDGMENT
MR. JUSTICE NUGEE: 
1.	This is an application by the claimant for summary judgment under CPR part 24 in a trade mark dispute.  The claimant Jaguar Land Rover Limited is a manufacturer of vehicles.  Until early 2016 it sold a range of vehicles under the name “Defender”.  This was the successor to the original Land Rover, first introduced in 1948.  The claimant says that more than 2 million Land Rover and Defender vehicles have been sold throughout the world.  Defender and its predecessor Land Rover can fairly be said to be a very well‑known, if not indeed iconic, vehicle.
2.	The claimant is the registered proprietor of two trade marks for the word DEFENDER: a UK trade mark, number UK 1 399 593, filed in 1989 in respect of the following goods in class 12:  
“Motor land vehicles and parts and fittings therefor; all included in class 12”  
and an EU trade mark, number EU 13 315 833, filed in October 2014 for various goods and services in classes 12, 28 and 37, including, in class 12: 
“Land vehicles; motor vehicles; motor land vehicles”.
3.	The defendant is a Canadian company which also makes vehicles.  One of its vehicles is what Mr. Lacroix, the Director of Global Product Management for the defendant, that I should say is called Bombardier Recreational Products Inc., refers to as a “Side‑by‑Side Vehicle” and describes as “a fun, recreational off roader” which he says is: 
“... capable of ‘work horse’ agricultural and estate applications such as towing and carrying”. 
It is not road legal, nor designed for on road use.  This vehicle is marketed under the name “Defender” as shown, for example, by a screenshot of a website “Introducing the All New Defender”.  It has recently been introduced into the UK and European markets.  
4.	In these proceedings the claimant claims infringement of its UK and EU trade marks on three bases.  The first of these is the use of the sign DEFENDER in relation to goods which are identical for those for which it is registered.  By Article 9(2)(a) of the EU Trade Mark Regulation, that is Council Regulation (EC) No 207/2009, as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council, the proprietor of an EU trade mark is entitled to exclusive rights, including by Article 9(2)(a) being:
“... entitled to prevent all third parties not having his consent from using in the course of trade, in relation to goods or services, any sign where:
(a)	the sign is identical with the EU trade mark and is used in relation to goods or services which are identical with those for which the EU trade mark is registered”.
5.	Similar provision is made for UK trade marks by the Trade Marks Act 1994 which originally implemented Council Directive 89/104/EEC of 21st December 1988, now updated by Directive (EU) 2015/2436 of the European Parliament and of the Council, section 10(1) of the Act providing as follows:
“A person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered”.  
This is for obvious reasons known as a “double identity” claim.
6.	The other two claims of infringement correspond respectively to Article 9(2)(b) of the Regulation and section 10(2) of the Act which applies where  the sign is identical with, or similar to the trade mark and is used in relation to goods or services identical with, or similar to, those for which the trade mark is registered, and there exists a likelihood of confusion on the part of the public; and to Article 9(2)(c)/section 10(3) of the Act which applies where the sign is identical with or similar to the mark, where the registered mark has a reputation and where the use of the sign, without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.
I need not refer to the latter two claims in any detail as the argument was focused on the first head of claim.  
7.	A defence was filed which sought in effect to address the likelihood of confusion, but that is no defence to the double identity claim and the defendant now seeks permission to amend its defence and introduce a counterclaim to challenge (in part) the validity of the trade marks.  That is pleaded in the draft defence and counterclaim as follows: first paragraph 5, which is part of the defence, seeks to add the words:  
“Save that the Registered Trade Marks [which is a reference to both the EU and UK marks] ... are and have at all material times been valid and/or liable to revocation for the reasons set out in the Counterclaim, Paragraph 5 of the Particulars of Claim is admitted [paragraph 5 being the pleading that the claimant is the owner of the marks]”.  
8.	Then a wholly new counterclaim is added as follows:  
“27. 	The Claimant has, on its own case, used the term 
‘DEFENDER’ since about 1990 in relation to a single car product whose essential features have remained the same since 1948 (although that production of that car was in fact discontinued in early 2016).
28. 	The Claimant has not used the term ‘DEFENDER’ in relation to any other land vehicle, motor vehicles, motor land vehicle or in relation to any parts or fitting for any other motor land vehicle.
29. 	At the date each Registered Trade Mark was filed, the Defendant infers that the Claimant did not have any intention to use the term ‘DEFENDER’ in relation to any other land vehicle, motor vehicle, motor land vehicle or in relation to any parts or fittings for any other motor land vehicle; alternatively, any other type of land vehicle, motor vehicle, motor land vehicle or in relation to any parts or fittings for any other type of motor land vehicle.
30. 	In the premises, save in respect of that part of its specification which is supported by the use described in paragraph 27 above, UK 593 (as that term is defined in paragraph 5(1) of the Particulars of Claim) is liable to be revoked for non‑use from the date five years after the completion of its registration.
31. 	In the further premises, save in respect of that part of its specification which is supported by the Claimant’s intended use of the term ‘DEFENDER’ as described in paragraph 28 above, each Registered Trade Mark is invalid on the ground that the application for it was made in bad faith.”  
9.	Then in the relief counterclaimed there are claims; 
(1) to revoke the United Kingdom trade mark to the extent set out above.  
(2) for a declaration that the United Kingdom trade mark is invalid to the extent set out above; 
and (3) for a declaration that [it says the United Kingdom trade mark but it means the EU mark] is invalid to the extent set out above.
In argument Mr. Alkin, who appeared for the defendant, accepted that unless he can succeed in that defence there is no other defence to the double identity claim under Article 9(2)(a)/section 10(1) of the Act.
10.	In relation to the UK trade mark it can be seen that there are two separate matters relied on.  One is in relation to partial non‑use of the mark, leading to partial revocation.  That is brought under section 46(1)(a) of the Trade Marks Act which provides:
“(1) The registration of a trade mark may be revoked on any of the following grounds—
(a) that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non‑use”.  
11.	That must be read with section 46(3) which effectively allows a use to be commenced or resumed after the expiry of the five‑year period and up to three months before the application for revocation is made; and with section 46(5) which provides:
“Where grounds for revocation exist in respect of only some of the goods or services for which the trade mark is registered, revocation shall relate to those goods or services only”.
12.	The thrust of the argument here is that the claimant has registered the trade mark for motor land vehicles but has not used the mark for the whole class of motor land vehicles, but only for a part of the class.  I do not propose to consider whether that is arguable or not as this ground of revocation only applies to the UK trade mark and not to the EU trade mark.  There is similar provision made in the Regulation, which is now in Article 51 of the Regulation, but that too requires non‑use for a continuous period of five years and since the EU trade mark only dates from 2014 it cannot be invoked in the circumstances of this case where five years have not yet elapsed.
13.	The second matter relied on in relation to the UK mark is partial invalidity on the grounds that the application was made in bad faith.  That is brought under section 47(1) of the Act which provides as follows:
“The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 3…” 
That has to be read with section 3(6) that provides:
“A trade mark shall not be registered if or to the extent that the application is made in bad faith”.  
It also has to be read with section 47(5) which provides:
“Where the grounds of invalidity exist in respect of only some of the goods or services for which the trade mark is registered, the trade mark shall be declared invalid as regards those goods or services only”.
14.	The corresponding provisions in the Regulation for the EU trade mark are now Article 52(1)(b) and Article 52(3) which provide: 
“1. An EU trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings: ...
(b) where the applicant was acting in bad faith when he filed the application for the trade mark ...  

3. Where the ground for invalidity exists in respect of only some of the goods or services for which the EU trade mark is registered, the trade mark shall be declared invalid as regards those goods or services only”.
15.	So far as the UK trade mark is concerned, section 32(3) of the Act requires that on an application for registration:  
“(3) The application shall state that the trade mark is being used, by the applicant or with his consent, in relation to those goods or services, or that he has a bona fide intention that it should be so used”.  
There is no equivalent provision in the Regulation for EU trade marks.
16.	Mr. Hicks, who appeared for the claimant, accepts for present purposes that it is arguable that an incorrect declaration under section 32(3) of the Act in relation to intention to use may result in partial or even total invalidity of the registration on the ground of bad faith and there is certainly authority which would tend to support that: see, for example, Demon Ale Trade Mark [2000] RPC 345, a decision of Mr. Geoffrey Hobbs QC as the Appointed Person, where he said at page 356: 
“In the present case the objection under section 3(6) related to the applicant’s breach of a statutory requirement.  Section 32(3) of the Act required him to be a person who could truthfully claim to have a bona fide intention that DEMON ALE should be used (by him or with his consent) as a trade mark for beer.  His application for registration included a claim to that effect.  However he had no such intention and could not truthfully claim that he did.  That was enough, in my view, to justify rejection of his application under section 3(6)”.
17.	This will not however assist the defendant unless he is also able to challenge the EU trade mark.  At this point it is helpful to refer back to the draft amended counterclaim as the only grounds on which bad faith are alleged are those found in paragraphs 27‑29 in the draft counterclaim and in particular in paragraph 29 the allegation that: 
“The Defendant infers that the Claimant did not have any intention to use the term ‘DEFENDER’ in relation to any other land vehicle, motor vehicle, motor land vehicles ...”, 
save for the ones that it has in fact used it for, a single car product whose essential features have remained the same since 1948.  That is the factual basis for the plea that the registered trade mark is invalid on the grounds that the application for it was made in bad faith.
18.	That therefore raises the question whether the EU trade mark is liable to be declared invalid for bad faith where at the time of filing the applicant had no intention to use it.  I was referred to a number of authorities on this question.  They were conveniently collected in a typically thorough and erudite judgment of Arnold J in Red Bull GmbH v Sun Mark Ltd. and Sea Air & Land Forwarding Ltd. [2012] EWHC 1929(Ch), where he considers the question at some length, first dealing with general principles applicable to bad faith at [130]‑[138], then dealing with the existing case law on lack of intention to use as a ground of bad faith at [139]‑[157] and then summarising his survey of the law at [158] as follows: 
“Is there a requirement of intention to use under the Regulation?  

158. As the law presently stands, it appears that there is no requirement under the Regulation that an applicant for registration of a Community Trade Mark must intend to use the mark.  Accordingly, a lack of intention to use does not, at least without more, constitute bad faith: see Trillium and Psytech.  As Jacob J observed in LA MER, however, it is open to question whether this is correct.  Indeed, it would seem arguable that the reasoning of the CJEU in Lindt v Hauswirth at [44]‑[45] is applicable: where the applicant has no intention to use the mark, the mark cannot fulfil its essential function of indicating the origin of the applicant’s goods or services.  Although the CJEU said that there would be bad faith if, in addition to lacking any intention to use the mark himself, the applicant’s sole objective was to prevent a third party from entering the market, the purpose of any trade mark registration is to prevent third parties from using the trade mark.  Furthermore, it is arguable that this is supported by what the CJEU said in Internetportal v Schlicht at [45]‑[48].  Thus the decision of the General Court in Peeters appears to recognise that it may be bad faith to apply to register a trade mark in respect of goods or services which are not ‘commercially logical’ for the applicant.  This is not an issue which arises in the present case”.  
19.	However, Mr. Hicks says that as there set out it is established law that lack of intention to use alone (and nothing else is currently pleaded) is not a ground of invalidity in EU law.  
20.	The relevant EU decisions are as follows.  First, Trillium, a decision of the Cancellation Division of what was then called the Office for Harmonisation in the Internal Market which dates from 2000, where the applicant requested a declaration of invalidity on the grounds that there was no intention on the part of Trillium Digital to use the mark subject to the application in respect of computer software other than telecommunication switching software, and that insofar as the application was filed for goods other than the specific software for which there was a genuine intention to use the mark, the application was filed in bad faith.  That was the claim.  
21.	At paragraphs (8)‑(9) the Office said this: 
“(8) The request is unfounded because, under European trade mark law, there was no ‘intention to use’ requirement, and thus the United Kingdom and CTM systems are different.  Under UK law an application for registration of a trade mark is required to contain a statement to the effect that the mark is being used by the applicant, or with his consent, in relation to the relevant goods or services, or that he has a bona fide intention to so use the mark.  Any registration applied for without such bona fide intention would be regarded, under Sections 32(3) and 3(6) of the UK Trade Marks Act 1994, as having been applied for in bad faith.  In comparison with the CTM system, the UK 1994 Act differs completely because the use in commerce is not a prerequisite for a CTM registration.  In general, and as a matter of principle, it is entirely left to the applicant to file a list of goods and services as long as he sees fit, i.e. a list exceeding his actual scope of business activity, and try later to expand his activities in order to be able to show genuine use of his CTM or face revocation under Article 50(1)(a) CTMR and other sanctions, respectively.  It is exactly this ‘liberal’ concept which underlies Articles 15 and 50 CTMR because otherwise a grace period of five years would make little sense, if any.  

(9) There may be cases where an applicant files a list of goods and services where all or part of it does not have the slightest connection with his actual economic activity, and where it might even appear unimaginable that said applicant would ever be able to expand.  If in such case the holder of the CTM immediately took action based on ‘remote’ goods and services, against third parties, it might be worth considering Article 51(1)(b) CTMR.  But this can be left undecided because it is not the case in the present proceedings before us.  The CTM is registered, in class 9, for computer software, and the actual activities of the proprietor relate to software”.
22.	Secondly, Psytech, a decision of the General Court, [2011] ETMR 46.  A number of points were decided in this case, but one of them concerned a plea that there had been infringement of Article 51(1)(b) of the Regulation and at [82] the court summarised the applicant’s case as follows: 
“First, according to the applicant, the bad faith is due to the fact that the number of goods and services in respect of which the intervener applied for and obtained registration is too large and that the intervener had no intention of using the mark at issue for the entire list of goods and services for the application for registration”.  
23.	That is dealt with by the court at [88]:  
“In the present case it must be pointed out, first, that neither Regulation 40/94 nor the case law provides a basis which enables the Court to find that there is bad faith in view of the size of the list of goods and services in the application for registration, with the result that the argument must be rejected”.  
24.	They go on to say in [89]: 
“In any event, an examination of the goods and services in respect of which the intervener applied for and obtained registration shows that they are precisely the kind of goods and services which it provides in the context of its commercial activities”.  
But it seems clear to me from the way in which they express themselves that that is not the ground of the decision in [88] which appears to be a decision in principle, that the law does not provide a basis to find that the size of the list of goods and services amounts to bad faith.
25.	There is no decision of the Court of Justice itself on the question of whether lack of intention to use is in itself bad faith.  The Court of Justice has considered bad faith in relation to the question of EU trade marks twice, once in the Lindt case, that is Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH, which, although described in the report at [2009] ETMR 56 as being a decision of the Court of First Instance, is clearly a decision of the Court of Justice itself, decided in 2009.  In that case there was no question of the applicant not intending to use the mark for the goods for which it was registered.  The allegation of bad faith was of a rather different type, namely that the mark was registered in order to stop someone who was already using a similar mark from continuing to do so.  At [37], the Court of Justice said:  
“Whether the applicant is acting in bad faith, within the meaning of art.51(1)(b) of Regulation No.40/94, must be the subject of an overall assessment, taking into account all the factors relevant to the relevant case”.  
At [41] they said: 
“41. Consequently, in order to determine whether there was bad faith, consideration must also be given to the applicant’s intention at the time when he files the application for registration.  

42. It must be observed in that regard that, as the Advocate‑General states in point 58 of her Opinion, the applicant’s intention at the relevant time is a subjective factor which must be determined by reference to the objective circumstances of the particular case.  

43. Accordingly, the intention to prevent a third party from marketing a product may, in certain circumstances, be an element of bad faith on the part of the applicant.

44. That is in particular the case when it becomes apparent, subsequently, that the applicant applied for registration of a sign as a Community trade mark without intending to use it, his sole objective being to prevent a third party from entering the market.  

45. In such a case the mark does not fulfil its essential function, namely that of ensuring that the consumer or end user can identify the origin of the product or service concerned by allowing him to distinguish that product from those of different origin, without any confusion (see, inter alia, Joined Cases, Henkel v OHIM (C‑456/01 P & C‑457/01 P) [2004] E.C.R I‑5089 at [48]”.
26.	Then there was a further decision of the Court of Justice in Internetportal and Marketing v Schlicht (Case C – 569/08) [2010] ECR I-4871.  This primarily concerned the question of registration of a domain name, but the applicant in question had first registered a trade mark and on that the CJEU said this at [42]: 
“The issue of whether an applicant is acting in bad faith [which also applied in the domain name Regulation] must be the subject of an overall assessment, taking into account all the factors relevant to the particular case (see by way of analogy, Case C‑529/07 Chocoladefabriken Lindt & Sprungli [2009] ECR I0000, paragraph 37)”. 
27.	Then at [46]: 
“The fact of applying for registration of a mark without the intention of using it as such but the sole purpose of subsequently registering, on the basis of the right to that mark, a.eu top level domain name during the first part of the phased registration provided for in Regulation No 874/2004 may, under certain circumstances, indicate conduct in bad faith within the meaning of Article 21(1)(b) of that regulation.  

47. In the present instance, it is apparent from the order for reference that, although the appellant registered the word mark & R & E & I & F & E & N & in Sweden for safety belts, it actually intended to operate an internet portal for trading in tyres, which it intended to register.  

48. Consequently, according to the national court’s findings, and as the appellant in the main proceedings itself admits, the latter had no intention of using the mark which had first thus registered for the goods covered by that registration”.
28.	Mr. Hicks’s submission is that on the basis of those EU cases, there is no support in any EU decision at any level for the idea that a non‑intention to use by itself could constitute bad faith.  It might be if coupled with something else, such as an intention to prevent a third party from entering a market or, as in the Internetportal case, with the intention of using the registration as a basis for applying for a domain name.
29.	Mr. Alkin submitted that the Court of Justice might take a different view.  He pointed to a further decision of the General Court, Peeters Landbouwmachines BV v OHIM, Case T – 33/11, [2012] ECRI-0000.  In that case at [6] the court said:
“In essence, the applicant alleges that the intervener was acting in bad faith at the time of filing the application for registration of the mark at issue.  The intervener’s sole objective in making that application was to prevent the applicant from continuing to market agricultural goods under the mark BIGA ‑ despite the fact that the applicant had an earlier right over that mark”.  
Then after reference to Lindt, they said this at [24]:  
“24. Moreover, it cannot be claimed that the intervener registered the mark at issue with no intention of using it and with the sole objective of preventing a third party from entering the market, since the goods have been marketed under that mark in a great many areas of the European Union since that date of registration.  

25. In that connection it should be noted that, as a rule, it is legitimate for an undertaking to seek registration of a mark, not only for the categories of goods and services which it markets at the time of filing the application, but also for other categories of goods and services which it intends to market in the future.

26. In the present case, it has not been shown in any way that in so far as the application for registration of the mark at issue concerned the goods in Class 7 ‑ in particular, cranes ‑ it was artificial and not commercially logical for the intervener.  That is all the more so because it is not disputed that the goods in that class were marketed by the intervener, even if under another mark.  Accordingly, the mere fact that the application covered goods in Class 7, to which the goods marketed by the applicant belong, does not demonstrate that the application was motivated solely by the intervener’s intention of preventing the applicant from continuing to use the mark BIGA.
30.	In a carefully structured argument Mr. Alkin submitted that it was possible that the Court of Justice might take the view that in circumstances such as this case there was bad faith.  There were a number of strands to his argument.  So far as the EU material was concerned, he pointed to Recital (10) to the Regulation which reads: 
“There is no justification for protecting EU trade marks or, as against them, any trade mark which has been registered before them, except where the trade marks are actually used”.  
31.	He pointed to the reference in Lindt to the essential function of a trade mark, that was at [45] in the passage which I read, the essential function being that of ensuring that the consumer or end user can identify the origin of the product; and to the statement in [43] and [44], that the intention to prevent a third party from marketing a product may be an element of bad faith, particularly when it becomes apparent, subsequently, that the applicant applied for the mark without intending to use it.
32.	He said that there was no justification for protection of the mark if it was not used and there was no intention to use it.  It was different, he said, if the mark might possibly be used in the future, but not if the applicant at the time of application had a settled intention not to use it.
33.	He relied also on what was said in Peeters at [25] where the General Court said that it was legitimate for an undertaking to seek registration for a mark not only for those goods and services which it marketed at the time of filing the application, but also those which it intended to market in the future.  
34.	He added to that various comments by judges in England.  Firstly, Pumfrey J in a case called Decon Laboratories Ltd. v Fred Baker Scientific Ltd. [2001] RPC 17, in which at [30], having referred to the Trillium decision, he said:  
“The Division says that in general, and as a matter of principle, ‘it is entirely left to the applicant to file a list of goods and services as long as he sees fit’“.  
Then he refers to them pointing out that:
“... there may be cases where an applicant files a list of goods and services which ‘does not have the slightest connection with his actual economic activity’“.  
He adds this: 
“I have some difficulty with this approach.  What does ‘not have the slightest connection with his actual economic activity’ mean?”
Then having referred to the subjective nature of bad faith, he says at 31: 
“This may be thought to be anomalous when one is considering the intended and actual use of the mark and a suitable specification of goods.  In my judgment, the validity of registrations should not, in this context, depend upon subjective considerations.  In my judgment, the underlying objection might well be thought to be far closer to the idea that the proprietor should lose his registration to the extent to which a reasonable person in his position would know that the specification of goods as applied for was too wide”.  
Then having said that it was desirable for there to be consistency between the UK and OHIM, he said at [35]: 
“If this view is right, it is improbable (but not impossible) that a decision as to the width of a specification of goods would lack good faith”.
35.	Mr. Alkin then pointed to what Jacob J said in Laboratoires De La Mer Trade Marks [2002] FSR 51, where, he said at [19] that if an application for a trade mark in the UK contained an untrue statement that he intended to use it, then: 
“... it seems fairly plain that the registration is vulnerable to an attack as one made in bad faith (section 3(6) of the UK Act implementing Article 3(2)(d) of the Directive).  There is no such requirement in the case of Community Trade Mark Applications (see the requirements for the content of the application in rule 1 of the Implementing Regulation 2868/95).  An applicant for a CTM does not expressly have to say he uses or intends to use the mark applied for.  So, unless the mere making of an application is taken as an implicit statement of an intention to use, then a bad faith attack based on any lack of intention to use (under Article 51(1)(b) of regulation 40/94) may fail.  The First Cancellation Division of OHIM so held in Trillium Trade Mark (Case C000053447/1, March 28, 2000).  The decision is not particularly satisfactory (see the criticisms in Kerly’s Law of Trade Marks and Trade Names (13th ed.) at para. 7‑230).  If it is right, however, there is simply no deterrent to applicants seeking very wide specifications of goods or services for CTMs ‑ with all the greater potential for conflict that may give rise to.  I understand that in practice OHIM are quite content to permit such very wide specifications ‑ indeed often all the goods or services within a class are asked for and granted.  The Trillium point will undoubtedly come up again ‑ for it seems bizarre to allow a man to register a mark when he has no intention whatever of using it.  Why should have one to wait until five years from the date of registration before anything can be done?  Whatever the width of the ‘umbra’ of the specification, it should also be remembered that the holder’s rights to stop infringement or prevent registration of a later similar mark extend to the ‘penumbra’ of ‘similar goods’ (section 10(2) of the UK Act, Article 5(1)(b) of the Directive and Article 9(1)(b) of the Regulation).  A wide umbra means there is an even wider penumbra.  Other traders with a similar mark may not go into either the umbra or penumbra, whether by use or registration”.  
He did however go on to say at [20]: 
“Thus it is that the jurisdiction to remove for non‑use is very important.  It may be the only way of dealing with covetous specifications, albeit it can only come into play after five years from the date of registration”.  
36.	Then Mr Alkin referred to the comments of Arnold J in Red Bull at [158] which I have already read.  He submitted that the assessment of bad faith requires an overall assessment of the facts, and that in this case where there had been no actual use of the mark except for a very particular and very famous car it is a reasonable inference that it was unlikely that the claimant had any intention to use it any more widely because if it had intended to do so, it might be thought that it would have done so before the application in 2014.  This was a case not just where there was a lack of intention to use, but it was a proper inference that the claimant had at the time of the application a settled intention not to use the mark any more widely.  Then he adds to that, thirdly, that it is a proper inference that the purpose of applying for a wide specification was to throw up an obstacle to other parties.  That, he says, is sufficient to satisfy the test of bad faith, or at least arguably so.
37.	He accepted that all that was currently pleaded was the lack of intention to use, but he said that it could be inferred there was a settled intention not to use and that the intention must have been to obstruct third parties and if necessary he sought leave to amend to add those elements to make that good.
38.	I asked for submissions on whether decisions of the General Court are binding on me.  The position was very clearly set out in a most helpful submission which I received from Mr. Hicks which Mr. Alkin did not dispute as a statement of the law.  It can be summarised as follows: section 3(1) of the European Communities Act 1972 provides:
“For the purposes of all legal proceedings any question as to the meaning or effect of any of the Treaties, or as to the validity, meaning or effect of any EU instrument, shall be treated as a question of law (and, if not referred to the European Court, be for determination as such in accordance with the principles laid down by and any relevant decision of the European Court)”.  
Schedule 1 to that Act defines the European Court as meaning the Court of Justice of the European Union. Article 19(1) of the Treaty on European Union provides:  
“The Court of Justice of the European Union shall include the Court of Justice, the General Court and specialised courts. It shall ensure that in the interpretation and application of the Treaties the law is observed.  

Member States shall provide remedies sufficient to ensure effective legal protection in the fields covered by Union law”. 
It follows from that, and I accept that this is the position, that decisions of the General Court are binding on UK courts, including me.  
39.	Although the argument has proceeded on the basis that what is in issue is a lack of intention to use, that, it seems to me, is in reality a shorthand and at any rate to my mind a potentially misleading shorthand.  In this case it cannot be said that the claimant had at the time of the application for the EU trade mark a lack of intention to use the word DEFENDER for the class of goods for which it was registered, namely land vehicles, motor vehicles and motor land vehicles.  The claimant’s vehicles are clearly land vehicles, motor vehicles and motor land vehicles and in any normal use of language it is simply inaccurate to say that the claimant did not have an intention to use the mark, for the very goods for which it was registered.  
40.	That seems to me to make this case rather different from cases such as the Demon Ale case where the applicant had no intention to use the mark for beer or the Internetportal case where the applicant had no intention to use the mark for safety belts.  In other words, this is to my mind not really best described as a case of a lack of intention to use; it is more accurately described as a case where what is alleged is that the claimant had no intention of using the mark for the entire range of goods covered by the application.  
41.	That seems to me to be precisely the situation covered by Psytech.  As I read from [82], the allegation in that case was that the intervener had no intention of using the mark at issue for the entire list of goods and services in the application for registration due to the fact that the number of goods and services in respect of which the intervener applied and obtained registration is too large.  In [88] of that judgment I find a ground for decision which appears to be a decision on the law, not on the facts, as I have already referred to, where the court says that neither the Regulation nor the case law provides a basis that would enable the court to find that there is bad faith in view of the size of the list of goods and services in the application for registration, with the result that that argument must be rejected.  By contrast, I do not read the decision in Peeters as providing any clear ruling to the contrary.  
42.	On the basis that the decision in Psytech being a decision of the General Court, and hence of the Court of Justice of the European Union, is binding on me, I find that the pleaded allegation in support of the bad faith contention cannot as a matter of law constitute bad faith within the meaning of the Regulation.  In those circumstances there is no reasonable prospect of the defendant succeeding in its counterclaim to invalidate the EU trade mark.  That is sufficient, it seems to me, to justify summary judgment being given for the claim of infringement of the EU trade mark.
43.	However, I am conscious that there have been expressions of disquiet, to put it no higher, by much more qualified English judges than me on whether that is really the law and in case I am wrong about that there is to my mind another reason why the proposed defence fails.  It is clearly established that bad faith as a matter of EU law connotes a state of mind that is akin to, if not precisely the same as, dishonesty.  I need not map the precise parameters of this concept, but in Trillium at [11] the Cancellation Division said: 
“Bad faith is a narrow legal concept in the CTMR system.  Bad faith is the opposite of good faith, generally implying or involving, but not limited to, actual or constructive fraud, or a design to mislead or deceive another, or any other sinister motive.  Conceptually, bad faith can be understood as a ‘dishonest intention’.  This means that bad faith may be interpreted as unfair practices involving lack of any honest intention on the part of the applicant of the CTM at the time of filing”.
44.	In Lindt, as I referred to at [42], the court referred back to the statement of the Advocate‑General in her opinion that the applicant’s intention at the relevant time is a subjective factor and, as I read it, did not dissent at all from the analysis conducted by the Advocate‑General Eleanor Sharpston QC in Lindt.  That is found in [57ff] of her opinion.  She said at [57]: 
“It seems to me clear that, in normal usage, the concept of bad faith implies a subjective mental state of a general nature.”  
At [58], she said: 
“In both its written and its oral submissions, the commission has suggested that, while the applicant’s intention is a central element in determining bad faith, that subjective intention should be determined by reference to the objective circumstances of the case.  I agree that ‑ other than in the perhaps unlikely case of an admission of bad faith on the part of a trade mark proprietor ‑ the presence or absence of bad faith must normally be inferred from all the relevant objective circumstances”.  
It is that passage in [58] which was approved by the Court.  Then in [60], under the heading “Conclusion on the nature of bad faith” she said this: 
“I thus reach the view that the concept of bad faith on the part of the trade mark applicant within the meaning of the Community legislation: 

(i) cannot be confined to a limited category of specific circumstances such as the existence of a particular kind of prior right, a lack of intention to use the mark or actual or constructive knowledge of the existing use of a similar mark; and 
(ii) relates to a subjective motivation on the part of a trade mark applicant ‑ a dishonest intention or other ‘sinister motive’ ‑ which will none the less normally be established by reference to objective criteria (of which circumstances such as those listed under (i) may well form part); it involves conduct which departs from accepted principles of ethical behaviour or honest commercial and business practices, which can be identified by assessing the objective facts of each case against such standards”.
45.	That seems very similar to what was said by Lindsay J in Gromax Plasticulture Ltd v Don & Low Nonwovens Ltd. [1999] RPC 367 at 379, summarised by Arnold J in Red Bull at [134] as follows: 
“Bad faith includes not only dishonesty, but also ‘some dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area being examined.”  
46.	It is established in England that a person is presumed to act in good faith unless the contrary is proved (see Arnold J in Red Bull at [133]) and as there set out and as set out in a case called Brütt Trade Marks [2007] RPC 19, a decision of the Appointed Person, I believe Mr. Arnold QC as he then was, at [28] by reference to an earlier decision in Royal Enfield Trade Mark [2002] RPC 24 at 31 where Mr. Simon Thorley QC was sitting as the Appointed Person and said this: 
“An allegation that a trade mark has been applied for in bad faith is a serious allegation.  It is an allegation of a form of commercial fraud.  A plea of fraud should not lightly be made (see Lord Denning M.R. in Associated Leisure v Associated Newspapers [1970] QB 450 at 456) and if made should be distinctly alleged and distinctly proved.  It is not permissible to leave fraud to be inferred from the facts (see Davy v Garrett (1878) 7 Ch.D 473 at 489).  In my judgment precisely the same considerations apply to an allegation of bad faith made under section 3(6).  It should not be made unless it can be fully and properly pleaded and should not be upheld unless it is distinctly proved and this will rarely be possible by a process of inference”.  
That seems to me to be equally applicable to an allegation of bad faith under the EU Regulation.  
47.	In the present case, I have already said the bad faith alleged is premised on the fact that the claimant applied for registration for motor land vehicles and the like and the inference that it did not intend to use the mark DEFENDER on any other motor land vehicles than those which it had historically used it on.  That is really an allegation that the claimant applied for too broad a specification.  I will assume, contrary to the view I have already expressed, that it is arguable that deliberately applying for too broad a specification is evidence of bad faith.  But it seems to me that before an applicant could be found to have acted in bad faith on the basis that he applied for too wide a specification of the goods, elementary principles of pleading require the person making such a charge to say in what respect it is too wide.
48.	In the context of partial revocation for non‑use, the task of the court is to arrive at what has been described as a fair specification, recently summarised by Kitchin LJ in the Court of Appeal in Maier v Asos plc [2015] EWCA Civ 220 at [63] as follows: 
“The task of the court is to arrive, in the end, at a fair specification and this in turn involves ascertaining how the average consumer would describe the goods or services in relation to which the mark has been used, and considering the purpose and intended use of those goods or services”.  
49.	Where what is alleged is that the claimant has acted in bad faith by applying for too broad a specification, that is, in such circumstances, really saying that the applicant should, if acting in good faith, have applied for a narrower specification.  That was in effect accepted by Mr Alkin.  He said:
“So here, in circumstances where it must have been within the contemplation of the Claimant that the UK trade mark was over-broad in the light of the non-use provisions, to come along and say, ‘That is okay.  I can fix that by just filing an EU mark with a very broad specification’, rather than saying, ‘What I should probably do is file my EU mark with a narrower specification in respect of which I can establish use’, that is a particular fact in this case which is absent in the other cases that we have looked at and which I rely on as part of the broad assessment of the facts.”
51.	It is, I think, incumbent on the person making such an allegation to identify the, or at least a, narrower specification that he says ought to have been used and that would have sufficed to describe the claimant’s goods.  Without such an alternative narrow specification I do not think the case gets off the ground, bearing in mind that the charge of bad faith is akin to dishonesty and must be “fully and properly pleaded.”  
50.	Unless the defendant can point to some narrower specification which can be characterised as a fair specification, I do not see how he can establish that the claimant in applying for a wider specification acted in bad faith, as the whole premise of the allegation is that he was acting in a way that fell short of standards of acceptable commercial behaviour observed by reasonable experienced men in the trade and although I can see the argument that if there is a narrower specification that would be regarded by reasonable experienced men as the appropriate specification to apply for, then it might be bad faith to deliberately claim a wider one (as that could be said to fall short of the standards of acceptable commercial behaviour), I do not see how the argument can run without there being such a narrower specification.  
51.	In the present case nothing in the pleading begins to identify what narrower specification the defendant says the claimant should have applied for.  In oral argument, relying on the Nice Classification, Mr. Alkin submitted that a fair specification would be class 120199, “motor cars, automobiles, cars”, or, more simply, cars.  But in the course of a short but effective reply, Mr. Hicks convincingly demonstrated, at any rate to my mind, that “cars” would be far too narrow a specification for the full range of Defender vehicles.  He referred in particular to a 2010 brochure for Defender which shows the wide variety of vehicles which were sold under that mark.  Page 17 of the brochure refers to the Defender being available in nine body styles and a further five body styles and also says that Specialist variations, (Professional Vehicles) of Defender remain available through Land Rover Direct Sales in bespoke specifications.  Page 26 shows some of the body styles.  Some of them, for example the Defender 110 Station Wagon, might no doubt be described by the average consumer as “cars”, but others, for example the Defender 110 High Capacity Pick up, to my mind clearly would not.  
Page 39 of the brochure shows some of the Professional Vehicles referred to and, again, many of those could not fairly be called “cars”.  They include vehicles such as the 130 Quadtech 4 and the 110 Hydraulic Platform, which by no stretch of the imagination would be regarded as “cars”.  A similar exercise can be done in the 2013 brochure.  
I therefore reject as unarguable the suggestion that a fair specification for the claimant’s vehicles would have been “cars”.  That means that the defendant is seeking to allege that the claimant has acted in bad faith in effect by applying for too broad a specification, but has not successfully identified any narrower specification which the claimant should have applied for instead, the only suggestion being one which seems to be manifestly unsustainable.  Given the serious nature of an allegation of bad faith, and the obligation to plead such an allegation fully and properly, that seems to me by itself a reason for concluding that the defendant has not shown that there is any real prospect of success on the point.  I am conscious that under Part 24 the ultimate onus is on the applicant (in this case the claimant) to show that the defendant has no real prospect of success, but in practice the defendant has to point to something which is fit for trial.
52.	For those reasons I propose to grant summary judgment on the claim to infringement of the EU trade mark – that is the double identity claim under Article 9(2)(a) of the Regulation.  I understood from counsel that in those circumstances it was unnecessary for the claimant to pursue its other causes of action, but I will hear counsel on that and on any other matters which arise.
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