Enforcement Committee Puts Bad Faith Applicants on Notice

Bad faith filings have increased significantly in recent years, but many jurisdictions are ill-equipped to handle this abusive conduct effectively. Now, the Enforcement Committee Bad Faith Task Force has released the results of its survey of the bad faith filings in 90 jurisdictions that provides an overview in each jurisdiction of the prevalence of these filings, their treatment, and measures to deter their use.

Because bad faith filings cause immense damage to brand owners as well as consumers, INTA has made combating bad faith a priority issue of its overall advocacy mission. The Enforcement Committee created the Bad Faith Task Force in 2018 to focus on this worldwide problem. It spent its first term conducting the survey and subsequently compiled the results into a report, just released on April 23, 2021. (The data is accurate as of December 2019.)

The report shows results from a series of questions such as the level of severity of bad faith filings in each jurisdiction; whether there is a requirement that applications be made in good faith; whether bad faith is grounds for the Trademark Office to reject an application during examination or a basis for eliminating a registration; and whether bad faith is grounds to oppose an application. It also explores definitions of bad faith, impediments to successful bad faith claims, and other measures to deter bad faith filings.

Among the findings, less than one third of jurisdictions explicitly require applications be made with good faith, and in most jurisdictions, bad faith was not grounds for the Trademark Office to reject an application. As well, more than 50 percent of respondents said there are difficulties with bad faith filings that may discourage a claimant from proceeding with a claim of bad faith.

The results made it clear that INTA urgently needed to take a formal position on this issue. In 2020, with the survey responses in hand, the Task Force drafted a new Board Resolution on Bad Faith. The INTA Board of Directors adopted the “Bad Faith Trademark Applications and Registrations Resolution” at its meeting on November 11, 2020.

Previously, in 2009, INTA adopted a Resolution which, inter alia, affirmed the importance of supporting trademark owners in their fight against bad faith trademark violations by recommending that bad faith be recognized as a ground to oppose or to seek cancellation of trademarks. The recent review of practices for addressing bad faith across jurisdictions worldwide prompted revisiting this issue.

The results were varied, ranging from no recognition of or no provisions about bad faith to sophisticated laws and even criminal sanctions. The Task Force reviewed and analyzed “all the good, better and best practices” identified across jurisdictions, and from them derived INTA’s proposal set forth in the Resolution for the minimum acceptable standards that all jurisdictions should adopt to deal with bad faith filings.

The resulting Resolution establishes a set of minimum acceptable standards for the recognition of bad faith applications/registrations, suggested procedures for dealing with them, evidentiary requirements, and meaningful penalties, as well as a non-exhaustive list of factors which might indicate bad faith activity.

Although some of the standards may require future legislative changes, the Resolution also encourages examiners to be given greater powers to help eradicate obvious bad faith applications, along with a set of guidelines on how to interpret and apply these minimum acceptable standards.

Further advocacy efforts will be required in many jurisdictions, but for now it is hoped that these standards and guidelines will serve as a useful reference for any country looking to amend its legislation or practices regarding bad faith filings.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.