Arecent decision of the United States Court of Appeals for the Federal Circuitraises some interesting issues about trademark applications based on the lackof a bona fide intent to use the mark. As discussed below, oppositions based on the Canadian equivalent of thisground may become much more common in Canada in the future.
The Facts
Inthe U.S. it is possible to oppose a trademark application on the basis that theapplicant lacked a bona fide intent to use the mark.
Theappellant is in the business of manufacturing, importing and selling watches,clocks and personal care products. Itfiled a trademark application for the trademark “iWatch” based on an intentionto use its mark in association with a lengthy list of goods, each of whichbelonged to one of three general categories: watches, clocks and goods relatedto watches and/or clocks. Theapplication included a declaration that the appellant had a bona fide intentionto use or use through a related company or licensee, the trademark in commerce andin connection with the identified goods.
Therespondent opposed the application on grounds, which included an allegationthat the appellant lacked a bona fide intent to use the mark in commerce.
The Decision of the UnitedStates Patent and Trademark Office Appeal Board (the “Board”)
Theevidence available to the Board contained some evidence which, when reviewed inisolation, may have been sufficient to establish intent on the part of theapplicant. However, the circumstances asa whole, including the lack of documentary evidence and the conflictingtestimony of witnesses on behalf of the appellant, showed that the appellantlacked a bona fide intent to use the mark in commerce. As a result, the Board allowed the opposition.
The Appeal
Therelevant provision of the Lanham Act, the U.S. equivalent of the CanadianTrademarks Act, provides that a person who has a bona fide intention, undercircumstances showing the good faith of such person, to use a trademark incommerce may request a registration of a trademark. The court observed that there was nostatutory definition of the term “bona fide”. However, it was clear that an applicant’s intent must be “under thecircumstances showing the good faith” which strongly suggested that theapplicant’s intent must be demonstrable and more than a mere subjective belief.
Thecourt agreed with the decision of the Board. They said that the bar for showing bona fide intent was not high. However, the inconsistent testimony offeredby the appellant’s employees and the general lack of documents consistent withthe appellant’s case supported the Board’s conclusion that the appellant’sintention at the time of the application was merely to reserve a right in themark and not a bona fide intent to use the mark in commerce.
The Canadian Position
TheTrademarks Act currently providesthat an applicant for registration of a trademark shall file with the Registeran application containing, in the case of a proposed trademark, a statementthat the applicant by itself or through a licensee or by itself and through alicensee intends to use the mark in Canada.
Thematerial time for assessing an applicant’s compliance with this provision isthe filing date of the application. Thereis an evidential burden on an opponent to prove the facts to support theallegations pleaded in the statement of opposition. The specific burden for a ground based on thelack of intention to use the mark is relatively light since the facts are inthe possession of the applicant. Thelegal onus is on the applicant to show the application does not contravene theprovisions of the Trademarks Act asalleged by the opponent.
Whilethe decided cases dealing with this issue are primarily at the TrademarkOpposition Board level it seems reasonably well established that therequirement noted above for an applicant to state that it intends to use theapplied-for trademark in Canada is not merely pro forma. The applicant must have an actual intention touse the applied for mark at the filing date of the application. A requirement is not a mere technicality.
Underthe amended Act it is not clearwhether it will continue to be necessary to include a statement similar to thatset out above in an application but it is likely, there will no longer be anyrequirement. The Amended Act states that a person may file an application for atrademark they propose to use.
Itwill be open to an opponent to oppose an application on the basis that at thefiling date of the application the applicant was not using and did not proposeto use the trademark in Canada in association with the goods or services setout in the application.
Comment
Manyinterested parties including the writer have concerns with respect to some of theamendments to the Act since theyappear to remove the requirement to use a trademark. The government did not consult on this issueand numerous parties including the Canadian Bar Association and the AmericanBar Association, have submitted that there are significant problems with theseproposed amendments.
Oneof the consequences of the amendments is that it will be much easier for anyoneto obtain a trademark registration which will require trademark owners to beinvolved in more expensive oppositions to protect their interests.
Whilethe issue will have to work its way through the Trademark Opposition Board andthe courts, it remains to be seen whether the requirement to propose to use atrademark in the context of the amended Actis less onerous than the previous requirement to intend to use the mark.
John McKeown
Goldman Sloan Nash &Haber LLP
480 University Avenue,Suite 1600
Toronto, Ontario M5G 1V2
Direct Line: (416) 597-3371
Fax: (416) 597-3370
Email: mckeown@gsnh.com
These comments are of ageneral nature and not intended to provide legal advice as individualsituations will differ and should be discussed with a lawyer.
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