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May-June, 2010 Vol. 100 No. 3 Back to TMR Main Page
Bona Fide Intent to Use in the United States and Canada
The argument of this article is that bona fide intent to use should be an essential prerequisite for filing a trademark application in any country or region where protection is sought, and in particular in the European Union (EU) when filing an application for a Community trade mark (CTM). The interests of both traders and the public are best protected by a system that ultimately requires use or reputation of trademarks to justify injunctive relief. Although there are good reasons for allowing trademark applications to be filed based on intent to use, both U.S. and Canadian trademark laws contain safeguards to ensure that the rights of other traders and of the public are not adversely affected. The CTMR system lacks adequate measures to protect against overclaiming (and in fact encourages it), and thus it has become increasingly difficult and expensive to clear trademarks for use in the EU. This is particularly disadvantageous to small and medium-sized entities, for which the cost and uncertainty associated with obtaining a CTM registration can be an impediment to trade. Further, unlike the situation in the United States, where a fraudulent statement of bona fide intent to use can in some circumstances invalidate a trademark application or the resulting registration, in Europe, as the law now stands, the doctrine of bad faith cannot be invoked even in a case of deliberate overclaiming of a specification of goods and/or services.