November 9, 2011
Opposition and Cancellation Standards & Procedures Subcommittee of the Enforcement Committee
WHEREAS, it is acknowledged that the registration of a trademark confers certain rights to the owner with respect to its use of that trademark with regard to specific goods or services, including the right to prevent others from using the same or a confusingly similar trademark for related goods or services;
WHEREAS, it is acknowledged that such right should be conferred only with a corresponding obligation to use the trademark for the goods and services for which registration and, accordingly, protection is granted, with such use being actual and bona fide use in the course of trade for those goods or services in respect of which the mark has been registered and, accordingly, protected;
WHEREAS, it is further acknowledged that unused trademarks are an artificial barrier to the registration of new marks, and continued protection should be available only to protect marks actually used in commerce;
WHEREAS, in the absence of fraud or other exacerbating circumstances, cancellation of an entire registration due to non-use of the mark with only some goods and/or services listed in the registration is overly harsh, and trademark owners should not have to bear the risk of losing the privileges and protections for a registered mark in connection with the goods and/or services for which the mark has been used, even if it has not used the mark with other goods and/or services listed in the registration;
WHEREAS, the term “partial non-use cancellation” herein refers to the removal at the instigation of a third party of some but not all goods and/or services listed in an existing trademark registration on the grounds that the trademark owner has not used the mark with those goods and/or services within a specified period of time;
WHEREAS, Sections 1.3.1 and 1.3.2 of the Model Law Guidelines promulgated by INTA (last revised November 2007), provide that (1) there should be a saving against cancellation for non-use where the mark has not been used as a result of circumstances arising independently of the will of the owner of the trademark which constitute an obstacle to the use of the trademark, for example, import restrictions on or other government requirements for goods or services protected by the trademark; and (2) use of a trademark on exports should be considered use for the purposes of cancellation provisions;
WHEREAS, an action for partial non-use cancellation should be subject to the jurisdiction’s standing requirements for other cancellation proceedings; and
WHEREAS, the vast majority of jurisdictions in the world permit partial non-use cancellation of a trademark registration, but a number of countries and jurisdictions still do not provide for partial non-use cancellation in their trademark laws or do not provide for partial non-use cancellation in practice, though their laws are silent as to whether partial non-use cancellation is possible;
BE IT RESOLVED, that it is the position of the International Trademark Association that:
(i) where a trademark is registered for multiple goods and/or services, a partial non-use cancellation mechanism should be available to third parties, subject to the standing requirements for cancellation proceedings in the relevant jurisdiction;
(ii) in a non-use challenge by a third party, an owner of a registration for multiple goods and/or services should not be allowed to maintain the registration for those goods and/or services for which the mark has not been put to genuine use in the relevant jurisdiction after a specified period, if the owner does not justify its inaction;
(iii) where an owner of a registration covering multiple goods and/or services has made genuine commercial use of the mark in the relevant jurisdiction in connection with one or more goods and/or services listed in the registration, the registration should be maintained in connection with the goods and/or services for which the mark has been used in the relevant jurisdiction, even if other goods and/or services listed in the registration are removed from the registration for non-use; and
(iv) there should be a saving against cancellation of a registration with respect to a particular good or service where the mark has not been used with the particular good or service in the relevant jurisdiction only as a result of circumstances arising independently of the will of the owner of the trademark which constitute an obstacle to the use of the trademark in the relevant jurisdiction.
BE IT FURTHER RESOLVED, that INTA urges governments and trademark authorities for jurisdictions that do not permit partial non-use cancellation as set forth above to establish mechanisms for partial non-use cancellation.
The Oppositions and Cancellation Standards & Procedures Subcommittee has determined that most, but not all, of the world’s jurisdictions currently permit partial non-use cancellation (the removal at the instigation of a third party of some but not all goods and/or services listed in an existing trademark registration on the grounds that the registration owner has not used the mark with those goods/services within a specified period of time). The Subcommittee further determined that the absence of the possibility of partial non-use cancellation may restrain competition, hindering new owners from entering a market with their trademarks because of the existence of registrations for similar marks covering goods and/or services with which the registered mark has not been used. The Subcommittee concluded that there are several benefits deriving from the availability of partial non-use cancellation benefits trademark owners and the marketplace. These include:
- promoting greater integrity and accuracy of the Trademark Register and benefiting trademark owners and the consuming public, by (i) allowing continued protection to marks for goods/services with which marks are actually used in commerce, (ii) establishing an appropriate system of checks and balances by tying in registration-based privileges and protections of marks with the obligation to use such marks; and (iii) deterring potential trademark applicants from applying for registration of trademarks for goods and/or services with which the applicant has no intention of using the mark;.
- encouraging competition by removing an artificial barrier to the registration of new marks and facilitating entry of trademark owners into a market when no third party is actually using the same or confusingly similar marks with goods/services related to the entrant’s goods/services;
- preventing a trademark squatter from blocking a trademark for goods/services that he does not offer and in which he has no bona fide interest in protecting; and
- promoting economy of judicial resources by reducing the time and effort local courts may have to devote to unfair competition or infringement actions involving trademarks that have not actually been used with the relevant goods and/or services.
The Subcommittee’s conclusions are based on its study of 71 jurisdictions as to laws and practices relating to trademark cancellation based on non-use. To more fully understand and compare non-use cancellation proceedings, the Subcommittee also researched INTA’s online Country Guides
and Opposition Guide
, took into consideration the reports of previous INTA committees and subcommittees, and considered existing INTA policy statements regarding use requirements. Fuller details of this study are found in the Subcommittee's report, Report and Recommendations: Partial Cancellation Actions Based on Non-Use
The Subcommittee observed that the trend is for jurisdictions without partial non-use cancellation proceedings (e.g., Bosnia & Herzegovina, Ukraine) to move toward the implementation of partial non-use cancellation mechanisms in their trademark laws and practices due to the advantages and benefits as discussed above. The Subcommittee also determined that such implementation should not be burdensome or costly for local authorities, and in some cases does not involve amending domestic law but only changing the application of existing laws that are silent as to the possibility of partial non-use cancellation.
The Subcommittee also determined that the primary reasons given for certain jurisdictions’ non-allowance of partial non-use cancellation is the maintenance of stability of the ownership of a trademark as long as it is used at least for some goods and services and the avoidance of consumer confusion caused by the existence of similar marks for different goods and services. The Subcommittee concluded, however, that (1) the stability of the ownership of a trademark with respect to goods and services with which a trademark is not used runs counter to the fundamental objectives of trademark law; and (2) the generally accepted likelihood of confusion test already accounts for confusion based on the use of similar marks for goods and services that are not identical. The Subcommittee concluded that the likelihood-of-confusion test can be applied most effectively if trademark registrations represent actual marketplace use as much as possible, and that permitting partial non-use cancellation promotes the reflection of actual marketplace use in trademark registrations.
This resolution also does not address standing requirements (i.e., what interests – if any – a third party would need to show in order to bring an action for partial non-use cancellation) and evidentiary burdens (i.e., what the third party needs to show in order to establish non-use for any particular good/service). Given the difficulties inherent in proving non-use, the evidentiary issues, in particular, may warrant further consideration.