Bad Faith Trademark Registration, Duplicate Trademark Filings and
Non-Use Cancellations – Oh My!
Bad faith trademark registration may occur when brand owners seek to “re-register” the same trademark for the same goods and services in the same country. A reason for seeking a duplicate trademark registration for the same mark and products in the same country is because an earlier registration may become vulnerable to cancellation for the non-use of the mark.
However, many, if not most, countries do not allow brand owners to “re-register” trademarks if they already own a registration for the identical mark and goods and services. That is so because most country laws give trademark owners three or five years from the date of registration to commercialize the mark and products before registration becomes vulnerable to cancellation for non-use.
Thus, “re-registering” the same mark and products for the purpose of gaining another three or five year “grace period” within which to commercialize the mark and products may be viewed as a “bad faith” attempt to circumvent country laws. For that reason, many countries do not allow a duplicate bad faith trademark registration.
Trademark Use ‘Grace Period’
Once trademarks register, most countries grant a three or five year grace period, starting from the registration date, within which to use registered marks before registrations become vulnerable to cancellation for non-use. Accordingly, the grace period provides brand owners with sufficient time to put their registered marks to use and ‘perfect’ their trademark rights and registrations.
However, once that grace period expires, third parties may seek cancellation of trademark registrations on the ground of non-use and, if successful, may secure their own trademark registrations for a same or similar mark and claim ownership. For that reason, it is common practice for brand owners to seek ‘re-registration’ of the same mark and goods/services to reset the non-use “vulnerability clock” or grace period.
Example
If a company secures a Russian trademark registration on January 1, 2020 for ‘Trademark X’ for nutritional supplements, the company automatically receives a three year grace period from that date to commercialize the registered mark for nutritional supplements in Russia.
However, failure to launch those goods in Russian under the registered mark during that three year period renders the trademark registration vulnerable to cancellation for non-use. Accordingly, if that registration is cancelled, all trademark rights in Russian would be lost.
Specific Country Laws
Many countries do not allow a duplicate trademark registration strategy, including the United States, EU, Philippines and Russia.
United States Does Not Allow Duplication
U.S. trademark law does not permit trademark registration for the identical mark and identical goods/services. However, filing a new U.S. application for the identical mark with modified goods and/or services is permitted, even if the new application lists the same goods appearing in the earlier registration. For example, if the earlier registration lists products A, B and C, the new application for the same mark would be allowed for products A, B, C, and D.
Other Countries Allow Duplication
Conversely, certain countries permit duplicate trademark registrations, including Australia, China and India. However, while some country trademark offices may issue duplicate trademark registrations, those registrations may still be vulnerable to third party challenges on the basis of bad faith registration, i.e., bad faith intent to circumvent country trademark use laws.
Recent EU Case on Duplicate Trademark Registration
A recent EU trademark decision made that point clear when the European Union Second Board of Appeals cancelled a trademark owner’s trademark registrations (or removed certain duplicative goods/services from later issued registrations) on the basis of bad faith registration. In that decision, the Board stated that trademark owners that seek to circumvent EU trademark use laws by fraudulently “re-registering” their marks to extend the five year non-use grace period do so in bad faith and such practice is an “abuse of law.”
Potential Scenarios
Brand owners may encounter numerous duplicate trademark (‘bad faith’) registration scenarios depending on country laws, including the following:
1. Country trademark laws that permit duplicate trademark registrations (identical mark and identical goods/services)
- For those countries, fire away!
2. Country trademark offices that allow new registrations for the identical mark and same goods and services as long as new goods/services are also added to the application
- For those counties, make the required modifications and fire away!
3. Countries that do not allow new registrations for the same mark and for the same goods/services listed in an earlier registration even if the new application lists new goods/services within the same class or adds a new class
- For those counties, brand owners should modify the description of goods/services within a duplicate class in a manner that satisfies country trademark office guidelines and add the new goods/services and classes
4. Country trademark offices that issue duplicate trademark registrations but those registrations may still be vulnerable to challenge by third parties based on bad faith duplicate filing
- For those counties, best practice may be to modify the goods and services in a manner that satisfies local laws
Madrid Protocol (a/k/a International) Trademark Filing Considerations
Once you introduce the Madrid Protocol into the mix, filing strategies may become even more complicated!
For example, if the existing global trademark registrations posing duplicate trademark registration barriers were filed via the Madrid Protocol and are based on a brand owner’s only existing home country trademark registration(s), the brand owner may not use those same home country filings for new Madrid Protocol filings for counties that do not permit duplicate registrations, duplicate classes and/or duplicate goods/services.
Strategy Considerations
When faced with the reality that certain country trademark registrations and trademark rights are or will be vulnerable to cancellation for non-use, it is prudent to audit those rights and decide which of those rights should be preserved, if possible. Furthermore, the audit should consider whether any of the subject registrations can be perfected by putting a registered mark to genuine use – for at least some of the listed goods/services – or whether new filings should be made.
Lastly, it is also prudent — obviously — to prepare a strategy that contemplates potential duplicate trademark registration barriers on a country-by-country basis, which should include the assistance of trusted foreign counsel.
See related posts here and here about global trademark registration filing strategies.
Conclusion
As brand owners seek to maintain valid and enforceable global trademark rights for, what may be, bona-fide future business opportunities, they must do so strategically. Furthermore, they must do so with the understanding that there are many intricacies of trademark law that must be navigated or they run the risk of losing trademark rights, wasting money and suffering from a severe case of heart burn.