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A significant risk that brands fear is that others may file their trade mark first in a new market, as most trade mark systems operate under a 'first to file' approach. Brands can therefore be comforted by the UK Intellectual Property Office's (UKIPO) invalidation of a third party's trade mark despite there being no earlier registered mark in the UK.
In the UKIPO decision1, the New York Times (NYT) succeeded in invalidating the UK designation of an International Registration (IR) for WORDLE (the Applicant's Mark) owned by Stefan Heine (the Applicant) for bad faith and on the basis of its earlier unregistered sign for the word 'WORDLE' (the Unregistered Mark).
Background
Wordle is the popular and addictive web-based word game created and developed by the Welsh software engineer Josh Wardle in 2021, which was acquired by the NYT in 2022 (see here). The Applicant registered the Applicant's Mark in 2022 and in August 2023, the NYT applied to invalidate the Applicant's Mark on the basis of the Unregistered Mark and bad faith. The Applicant opposed the NYT's UK trade mark application, and the proceedings were consolidated.
The Bad Faith Finding
The Hearing Officer found that the Applicant:
- Was aware of the successful game WORDLE;
- Knew that the game was created by Mr Wardle and that the NYT had bought the rights to it;
- Sought to create an identical game under an identical name on the misguided assumption that he thought the NYT had no interest in Europe; and
- Attempted to insinuate that his game was an 'official' version of WORDLE and was associated with the NYT.
As a result, the Hearing Officer decided, taking all of the evidence into account, "the only logical conclusion" was that the Applicant "was not acting in a manner consistent with honest practices" (para. 153), and was therefore acting in bad faith when he registered the Wordle Mark.
Takeaways
- Use all tools available: Brand owners should deploy multiple overlapping doctrines where a filing appears opportunistic. The NYT did not rely on bad faith alone. Instead, it used a combination of rights to invalidate the Wordle Mark, including passing off, well‑known mark protection, and bad faith.
- Wider interpretation of bad faith: This decision builds on the post‑SkyKick approach to bad faith (see here), which shows that bad faith is not confined to outright dishonesty, but includes filings made without a legitimate trade mark purpose or with the intention of undermining third parties.
- Consolidating proceedings: The invalidity action was dealt with first as without the Applicant's Mark there could be no support for an opposition. This is a useful reminder that consolidation is not merely a procedural issue but can determine the outcome.
This interesting decision shows that the UKIPO is willing to apply bad faith as more than just an exceptional allegation, but as a tool for addressing conduct that distorts competition, misuses the trade mark system, and unfairly exploits the reputation of a well‑known mark (whether or not registered in the territory).
Footnote
1 The New York Times Company v Stefan Heine (O/0061/26).
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