September 14, 2012
Trade Names Subcommittee of the Enforcement Committee
WHEREAS, in 2009, the International Trademark Association set forth its position in a Board Resolution on the removal of later adopted, conflicting business identifiers from relevant registries and subsequently developed Model Law Guidelines
on Business Identifiers in Conflict with Trademarks, but did not address the issue of conflicting business identifiers no longer in use;
WHEREAS, in many jurisdictions, business identifiers obtain protection solely through registration and maintain such protection without any additional requirements such as periodic filings confirming use or renewal filings;
WHEREAS, some jurisdictions accord continuing rights to business identifiers even if there has been no use and/or the owner has been out of business for an extended period of time;
WHEREAS, in many jurisdictions, prior registered business identifiers can block a later arriving legitimate brand owner from registering or using its own business identifier even if the prior registered business identifier is not in use; and
WHEREAS, in some cases where the company or individual holding the registered business identifier may never have been in business, or may have been out of business for an extended period of time, there are few or no options available to a brand owner to remove unused (“deadwood”) business identifiers from the registry.
BE IT RESOLVED, that the International Trademark Association supports the adoption of practices and procedures to remove from the relevant registries business identifiers that are not in use. Such practices and procedures should include at least:
1. that affirmative action on the part of the business identifier registrant be required on a periodic basis to confirm the registrant’s interest in maintaining the registration. Such action could include a requirement that the business identifier registrant file a declaration attesting that (i) the registrant is the owner of the business identifier; (ii) the business identifier is in use (such use being defined by the regulations or laws of the jurisdiction); and (iii) the contact information for the registrant is current and correct. Jurisdictions may consider requiring that a reasonable fee be submitted with such declaration to cover associated administrative cost.
2. that relevant registries remove or cancel business identifier registrations for which the required filings have not been made within the prescribed time, after a reasonable grace period to cure a failure to comply has been given.
3. that third parties be able to request the administrative removal of a business identifier from the registry based on a showing of non-use as a business identifier (such use being defined by the regulations or laws of the jurisdiction). An example of such a procedure would be where a third party could request that the registry direct the registrant to confirm use of the business identifier for a period of time (e.g., anytime during the previous year), failing which the registration would be removed by the registry.
The Trade Names Subcommittee of INTA’s Enforcement Committee has the overall objective of addressing issues regarding the conflict of business identifiers (e.g., trade names) with trademarks. The subcommittee’s work resulted in INTA’s Board adopting a Resolution in 2009, setting forth INTA’s position in affirming the rights accorded between trademarks and business identifiers, where business identifiers not only include trade names, but also shop signs, commercial designations and/or other designations used in commerce within the framework of a country’s trademark laws. As directed by the Resolution, the subcommittee in 2011 drafted and presented to the Board Model Law Guidelines to address the issue of the protection of trademarks from infringement and/or dilution by later-adopted business identifiers. Subsequently, the Trade Names Subcommittee took up the separate and distinct issue of prior-registered business identifiers that remain registered despite no longer being used as business identifiers by their owners.
The subcommittee conducted a survey of 33 countries in order to determine what practices currently exist with respect to business identifiers. The survey results show a broad variety of practices concerning the maintenance of business identifiers on registries.
Some jurisdictions have administrative systems whereby a business identifier registrant is required to make annual or other periodic filings in order to maintain the registration. Should such a filing not be made, the registration is removed. Similarly, some jurisdictions have administrative procedures for trademark owners and others to seek the removal of business identifier registrations if they have reasonable cause to believe that a registrant has ceased doing business or is not conducting business under the registered name. An example of such procedure would be where a third party could request that the registry direct the registrant to confirm use of the business identifier for a period of time (e.g., anytime during the previous year). If such a registration authority receives no timely reply to a letter sent to the registrant at the address of record seeking confirmation of the registrant’s business activity, the registration authority can cancel the business name registration. It should be noted that “use” or “non-use” in the context of a business identifier, is not intended to necessarily be synonymous with “use” or “non-use” as a trademark. The objective of the Resolution is to address the issue of registry deadwood. The Resolution leaves it up to the respective jurisdiction to define what would constitute use or non-use as a business identifier such that the business identifier is associated with an active business.
Problems arise however, in those countries where, once registered, business identifiers remain on the registry indefinitely without an expiry date, and, in many cases, no regular filings indicating use or payments are required in order to maintain such registration. In those situations, the key issues include the following:
- A brand owner may be blocked from registering its own business identifier, even if the business identifier registrant is no longer conducting business. This poses a particular challenge for a company seeking to adopt a new name or mark in that a prior registered business identifier could be held against the company in seeking to obtain rights, even though the prior registered business identifier is not in use.
- If the business identifier is not in use, there may be no grounds for a trademark infringement action to bring about a court-ordered remedy of removal of the business identifier. Thus, the business identifier registration would still serve as a block to the registration of the brand owner’s own business name in the jurisdiction.
- Avoiding the build up of unused business identifiers (“deadwood”) on the registry is difficult where there are no grounds or administrative procedures in place for removing registered business identifiers not in use, such as fee payment delinquencies or other acts of omission or non-compliance.
- Removal of registered business identifiers no longer in use in many instances must be done by court order for which standing may be limited. In some cases, only the registrant or the registrar can seek removal. Where only the registrant of a business identifier has standing to seek removal of the registration, the registrant has no incentive to cancel the registration and in some instances may seek to extract compensation from third party brand owners before relinquishing its registration.
- In many jurisdictions, a third party (e.g., a legitimate brand owner) must initiate court proceedings for removal of a registered business identifier not in use. Such proceedings can be costly, particularly in jurisdictions where default judgment is not available. In such jurisdictions, if the business identifier registrant fails to file a defense in response to the claimant, an order removing the registration will not automatically issue, rather, a complete trial is required.
- Without periodic updating of business identifier contact information, the contact information may be incorrect, making it difficult or impossible for a brand owner to locate and deal directly with the registrant to seek removal of the registration.
The subcommittee recommends that jurisdictions: (a) require affirmative action, on a periodic basis, on the part of the business identifier registrant to confirm the registrant’s interest in maintaining the registration; (b) remove or cancel business identifier registrations for which the required filings have not been made within the prescribed time, after a reasonable grace period to cure a failure to comply has been given; and (c) allow third parties to request the administrative removal of a business identifier from the registry based on a showing of non-use as a business identifier (where use as a business identifier is defined by the regulations or laws of the jurisdiction). The Trade Names Subcommittee of the Enforcement Committee will draft model provisions for removal of business identifiers not in use, based on these principles, to be incorporated into the Model Law Guidelines on Business Identifiers in Conflict with Trademarks. The subcommittee believes that such guidelines would cull registries of unused or abandoned business identifiers and provide better registration data while posing no significant burden on registries or legitimate business identifier holders.
Accordingly, the Trade Names Subcommittee of the Enforcement Committee requests that the INTA Board adopt the above resolution supporting the implementation of practices and procedures for removing trade names and other business identifiers not in use from the relevant registries.
The Trade Names Subcommittee subsequently drafted the following documents:
Model Trade Name Law Guidelines for the Removal of Trade Names and Other Business Identifiers Not in Use from Relevant Registries
Guide to Understanding Model Trade Name Law Guidelines for the Removal of Trade Names and Other Business Identifiers Not in Use from Relevant Registries