Guidelines for the Removal of Trade Names
and Other Business Identifiers Not in Use
from Relevant Registries
BACKGROUND & SUMMARY
For more than 15 years, attempts have been made to address the issue of conflicts between trademarks
and “business identifiers.” A “business identifier” which is a broader concept than a “trade name,” was
defined in the World Intellectual Property Organization’s 1998 Joint Recommendation on Provisions
Concerning the Protection of Well-Known Marks as “any sign used to identify a business of a natural
person, a legal person, an organization or an association”. INTA passed a resolution in support of the
Joint Recommendation in September of 1999.
In certain jurisdictions, trademark owners face significant challenges when prior-registered business
identifiers remain registered despite no longer being used as business identifiers by their owners.
Tasked with the overall objective of addressing conflicts between business identifiers (e.g., trade names)
and trademarks, the Trade Names Subcommittee of INTA’s Enforcement Committee proposed, and the
Board of Directors passed in September 2012, a Resolution setting forth INTA’s position supporting the
adoption and implementation of practices and procedures to remove business identifiers that are not in
use from relevant registries.
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 registrar 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.
Problems could arise in those jurisdictions 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. Similarly, 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. In those situations, the key issues include the following:

A later-arriving legitimate 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 could 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.
In accordance with the 2012 Resolution, the Subcommittee has prepared the attached model law
guidelines for use by jurisdictions where appropriate, in drafting or revising legislation. The guidelines
recommend 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 giving a reasonable grace period to cure a failure to comply; and (c)
allow third parties to request the administrative removal of a business identifier from the registry based
on a showing of reasonable cause to believe that a business identifier is not in use (where use as a
business identifier is defined by the regulations or laws of the jurisdiction).
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The objective of these guidelines is to address the issue of registry deadwood. The guidelines leave 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. It should be noted that “use” or
“non-use” in the context of a business identifier is not intended necessarily to be synonymous with “use”
or “non-use” of a trademark.
The Subcommittee believes these guidelines will 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.
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