The INTA Board of Directors has adopted a Resolution
setting forth policy recommendations for the removal of trade names and other business identifiers from relevant registries in situations where the business identifier is no longer in use. The Resolution, proposed by the Enforcement Committee’s Trade Names Subcommittee, was presented and approved during the Board’s meeting held in Brussels, Belgium, on September 13, 2012.
Tasked with examining the interplay of laws and regulations governing trademarks and trade names, the Subcommittee recognized that in many jurisdictions, business identifiers (including trade names, company names, commercial designations, shop signs, etc.) obtain protection merely through registration with the appropriate registry. Further, the Subcommittee found that business identifier registrations often remain on a register despite no longer being in use. In such situations, these business identifiers may block a later-arriving legitimate brand owner from registering its own trademark as a business identifier within the jurisdiction.
Aware of the commercial significance of business identifiers in today’s global economy, the Subcommittee developed recommended practices and procedures to enable registries to address this issue and remove such “deadwood” registrations. These recommendations, which are set forth in the Resolution, urge jurisdictions to require periodic affirmative action on the part of a business identifier registrant, thus confirming the registrant’s interest in maintaining the registration. Suggested actions may include filing a declaration of ownership and use (with use being defined by the regulations or laws of the jurisdiction) and confirming current contact information of the registrant. If such filings are not made within the prescribed time and after a reasonable grace period has been provided, the relevant registries should remove or cancel the business identifier registration. Furthermore, third parties should be permitted to request the administrative removal of a business identifier from the registry based on a showing of non-use as a business identifier.
These recommendations are based on the results of a survey of the business identifier registration practices of 33 countries worldwide.
The Trade Names Subcommittee is now drafting model provisions for removal of business identifiers not in use, based on the principles in the Resolution, to be incorporated into the current Model Law Guidelines on Business Identifiers in Conflict with Trademarks. The Enforcement Committee will actively promote the Model Law Guidelines for the purposes of minimizing conflicts between trademarks and business identifiers across all jurisdictions.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
© 2012 International Trademark Association