4 types of bad faith trademark applications that will be rejected

Bad faith applications can be a significant problem in trademark registration, as they can harm the marketplace by preventing fair competition and can also damage the reputation and goodwill of existing trademarks. In this context, it is important for brand owners to understand the potential harm of bad faith trademark applications and the legal measures in place to prevent them.

By

Igor Demcak

What are bad faith trademark applications?

In trademark law, bad faith refers to the intentional and dishonest use or registration of a trademark with the intention to deceive consumers or unfairly compete with other businesses. Bad faith may also refer to an intentional violation of the rights of a trademark owner. Bad faith trademark applications are strictly prohibited under both the EU and US trademark law. 

In the European Union, bad faith trademark applications are prohibited under Article 4 of the EU Trade Mark Regulation (EUTMR). The EUTMR defines bad faith as an intention to take unfair advantage of the distinctive character or repute of an earlier trade mark. It also includes situations where the applicant has no intention to use the trademark in connection with the goods or services covered by the application. 

In the United States, bad faith trademark applications are prohibited under the Lanham Act. The Lanham Act prohibits the registration of trademarks that are likely to cause confusion with an existing trademark, or that are being used in bad faith to appropriate the goodwill or reputation of an existing trademark. The Lanham Act also allows for cancellation of trademarks that were obtained through fraud or false representation. 

Both the EU and the US have legal provisions that allow the rightful owner of an existing trademark to challenge a bad faith trademark application or registration. In addition, both jurisdictions have legal consequences for parties that file bad faith trademark applications, including opposition, cancellation, and infringement proceedings.

Examples of bad faith trademark applications

1. Registering a trademark that is identical or confusingly similar to an existing trademark, with the intention of causing confusion among consumers. 

The main purpose of trademark law is to protect consumers from confusion or deception in the marketplace, and to ensure that trademarks are used to identify and distinguish the source of goods and services. When a party intentionally registers a similar trademark with the intention of causing confusion among consumers, they are violating the basic principles of trademark law and acting in bad faith.

2. Using a trademark that is identical or confusingly similar to an existing trademark, with the intention of taking advantage of the reputation and goodwill of the existing trademark.

Using a trademark that is identical or confusingly similar to an existing trademark constitutes bad faith application because it is an intentional and dishonest attempt to benefit from the reputation and goodwill of the existing trademark without authorization or permission. Intentionally using a similar trademark can also harm the rightful owner of the existing trademark by diluting its distinctive character or causing the owner to spend time and resources defending its rights in the trademark. This type of behavior is considered unethical and can lead to legal consequences, such as infringement or unfair competition lawsuits, if the rightful owner challenges the use of the similar trademark.

3. Registering a trademark in a country or region where it is not intended to be used, with the intention of preventing others from using the same or similar trademark in that jurisdiction.

When a party registers a trademark with the intention of blocking a competitor from using a similar trademark, they are not using the trademark for its intended purpose, but rather to prevent fair competition in the marketplace. This type of behavior can harm the competitor's ability to do business and unfairly benefit the party that registered the trademark.

4. Filing a trademark application with false or misleading information, such as claiming a prior use or ownership of the trademark.

Trademark law requires that applicants provide accurate and truthful information when applying for a trademark registration. When a party files a trademark application with false or misleading information, it is an intentional and dishonest attempt to deceive the trademark office and gain an unfair advantage in the registration process. This type of behavior can harm the integrity of the trademark system and undermine the principles of fair competition.

Takeaway

In general, bad faith is considered to be an unethical and unlawful practice in trademark law. If a trademark owner can prove that another party acted in bad faith, they may be able to successfully challenge the registration or use of the trademark.

Igor Demcak
Igor Demcak

Trademark Attorney

Founder & CEO of Trama

7 year experience in IP protection

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