INTA MODEL TRADE NAME LAW GUIDELINES
Business Identifiers in Conflict with Trademarks
Article 1: Definitions
Article 2: Conflicts
Article 3: Remedies
Article 1: Definitions
1) “Business Identifier” means any name, trade name, sign, commercial designation, shop
sign, company name, or other designator used by a person, entity, or organization to identify
a business, business activity, vocation and/or to otherwise distinguish its goods and/or
services from those of another, including but not limited to, use for websites, including but
not limited to domain names, labeling or packaging goods, business stationery, and/or
advertising of goods and services.
2) “Trademark” has the definition presently in use in the local jurisdiction or means any word,
name, symbol, sign, or device or any combination thereof used by a person, entity, or
organization to identify and distinguish its goods and/or services from those manufactured
or sold by others, and to indicate the source of the goods and/or services, even if that source
is unknown.
3)
“Competent Authority” means an administrative, judicial or quasi-judicial authority which,
in accordance with the laws of the local jurisdiction, is competent for and has jurisdiction
for the evaluation of infringement, unfair competition and/or dilution claims.
COMMENT TO ARTICLE 1(1): The intent of Article 1(1) is to define “business identifier” in
a manner that ensures inclusion of a business name that is not otherwise specified, and the use
of the term “other designator” ensures the intended scope is met. It should be noted that the
phrase “other designator” cannot be “any” designator, but rather must be a “designator used
by a person, entity, or organization to identify a business, business activity, vocation and/or to
otherwise distinguish its goods and/or services from those of another.”
COMMENT TO ARTICLE 1(2): The definition of Trademark in Article 1(2) is based upon the
INTA Model State Trademark Bill (which defines a “Trademark” as “any word, name, symbol,
or device or any combination thereof used by a person to identify and distinguish the goods of
such person, including a unique product, from those manufactured or sold by others, and to
indicate the source of the goods, even if that source is unknown”) and the World Intellectual
Property Organization’s 1998 Joint Recommendation on Provisions Concerning the Protection
of Well-Known Marks (which includes “organization”). The addition of the terms “sign” and
“entity” are in order to meet the stated goals of the Guidelines and the Resolution upon which it
is based. Further, the intent of the definition of Trademark is not to limit it to only registered
trademarks because (1) some jurisdictions provide common law rights, and 2) the lack of preregistration protection for marks is one of the issues that this Model Law Guideline is intended
to address; in “register before enforcement” jurisdictions, despite the option of an unfair
competition action, even where the Trademark is extensively put to use, the mark owner is
powerless to bring an infringement action to protect its mark and goodwill during the pendency
of the application, which could be years. This could result in significant, irrepressible damage
to the Trademark owner. Additionally, even though once registered, mark owners may bring a
retroactive action, in many instances, the infringer will take a tougher stand on changing its
mark because it may have invested years of advertising and promotional dollars in what it now
considers to be its brand, signage, etc. Therefore, in order to ensure the protection of validly
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earlier adopted Trademarks, especially those that have been put to use or are famous marks, the
definition allows for Trademark owners to have redress, suffer less damage, and effectuate a
more prompt resolution even in the absence of registration.
COMMENT TO ARTICLE 1(3): The definition of “Competent Authority” in Article 1(3) is
based upon similar specifications provided by the World Intellectual Property Organization
(WIPO). In like fashion, INTA has defined the term “Competent Authority” in a manner to
provide guidance on what constitutes an appropriate authority for purposes of evaluating a
claim under a statute that comports with these guidelines.
Article 2: Conflicts
1) A Business Identifier shall be deemed to be an infringement of a Trademark where:
a) the Business Identifier is identical to or confusingly similar to, and/or creates a
likelihood of confusion, affiliation and/or association with an earlier Trademark right,
and designates activities identical or similar to the goods or services covered by the
Trademark, if that Trademark is registered or has been put to use, and/or cases where
the Business Identifier is otherwise likely to confuse consumers by suggesting a
connection between the person, entity, or organization that owns or uses the Business
Identifier and the owner of the earlier Trademark right; or
b) the Business Identifier is likely to dilute the distinctive character of an earlier wellknown or famous Trademark and/or take advantage of or cause undue detriment to an
earlier well-known or famous Trademark, regardless of the goods or services
designated, provided such Trademark has been registered or has been put to use.
2) It shall be a defense to an allegation of trademark infringement if a Business Identifier was
applied for, used, or registered, before the Trademark was applied for, used, or registered,
except where the Business Identifier was applied for, used, or registered in bad faith. In
determining bad faith, the Competent Authority shall consider whether the person who
obtained the registration of or used the Business Identifier had knowledge of or reason to
know of the Trademark in any jurisdiction at the time when the Business Identifier was
applied for, used, or registered.
3) The owner of a Trademark has a right to bring an action under Article 2(1) and is entitled to
request the remedies set forth in Article 3 based on a decision of the Competent Authority
that a violation of Article 2(1) has occurred, in accordance with the local jurisdiction’s
statute of limitations for trademark infringement and/or dilution for famous marks.1
4) Notwithstanding the above, and for the avoidance of doubt, the registration of any Business
Identifier by any official registry shall not be a defense to proceedings for infringement of a
previously registered Trademark or a trademark that has previously been put to use.
[COMMENT TO ARTICLE 2(1): Certain jurisdictions provide that a trademark holder can take
action against a business identifier only once the trademark has registered, regardless of an
earlier filing date, even if the trademark is in use and advertised extensively, and even if the
trademark is arguably already famous as a result. Essentially, those jurisdictions have created
loopholes that prevent trademark owners from addressing later adopted business identifiers
while waiting for their trademark to register. Where the Trademark has been put to use in such
a manner that it has established a reputation and come to represent goodwill of its owner such
that it functions as an indicator of source of the trademark owner (and is not just a pending
application), Article 2 provides mechanisms that can be used by the trademark owner against
such business identifiers. Specifically, Article 2(1) provides two options for the owner of a
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In the event that there is no statute of limitations, local jurisdictions may wish to consider a provision
designating a period of time such as five years beginning from the time the owner of the Trademark had
knowledge of the use of the conflicting Business Identifier.
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Trademark to prevent the use of a later-adopted Business Identifier – an action based on a
likelihood of confusion (Article 2(1)(a)) and/or an action based on dilution (Article 2(1)(b)).
The Model Law Guideline leaves local jurisdictions free to define a “famous” or “well known”
mark for the purposes of Article 2(1)(b). Similarly, the Model Law Guideline leaves it up to
local laws to determine the factors for establishing whether there is a likelihood of confusion.
Also, some jurisdictions may have existing unfair competition laws that could be used to cover
the activities covered by this Article 2(1). In those instances, this Model Law Guideline can be
used as a supplement or compliment to such existing laws.
COMMENT TO ARTICLE 2(2): Article 2(2) provides a defense to an action under Article
2(1). The defense provides that earlier rights in a Business Identifier cannot be attacked or
displaced, unless such prior rights were applied for, used, or registered in bad faith, where bad
faith indicates prior knowledge of the Trademark. For example, if a Trademark was launched
in a first jurisdiction before being launched in a different jurisdiction, then the owner of a
subsequently adopted Business Identifier in the different jurisdiction may be found to have acted
in bad faith if such owner knew of or had reason to know of the earlier use of the Trademark in
the first jurisdiction. What constitutes bad faith could also be defined based on criteria used in
the specific jurisdiction.
COMMENT TO ARTICLE 2(3): Article 2(3) provides that, subject to the local jurisdiction’s
applicable statute of limitations, a trademark owner can seek a decision that prohibits use of
and/or cancels a Business Identifier that violates a trademark owner’s rights under Article 2(1).
COMMENT TO ARTICLE 2(4): Article 2(4) provides that registration of a business identifier
by any official registry is not a defense to proceedings brought under Article 2(1) as trade name
registries typically do not conduct prior rights review, but only whether there is another
identical name on the trade name registry, and often, simply tacking on different or additional
elements (such as “Inc,” “Tech,” or “Co”) provides a sufficient difference. Thus, Article 2(4)
prevents the fact of registration of the Business Identifier from itself being a defense to an
action under Article 2(1). To the extent the registered Business Identifier was in use before the
application for, first use of, and registration of the Trademark, such prior use may serve as a
defense under Article 2(2) to an action under Article 2(1).
Article 3: Remedies2
1) Removal:
a) Where a Business Identifier is deemed by the Competent Authority to be an
infringement of, or to be diluting of, or otherwise conflict with, a Trademark, the
registration accorded to a Business Identifier may be suspended, cancelled, modified, or
removed by the administrative or judicial authorities. Specifically the Competent
Authority may:
i)
order the owner of the Business Identifier to change, amend, modify or cancel the
Business Identifier from the relevant registry, and/or,
ii) order the Registrar of such Business Identifier to direct, in writing, the owner of
such Business Identifier to change, modify, amend and/or cancel its name within
such period as the Competent Authority may specify. If the Business Identifier is
not amended in compliance with the order, the Competent Authority may itself
order the amendment of the trade name by issuing an order to the relevant Registrar
and the Registrar shall be required to and have the jurisdiction to ensure compliance
with such order.
Compensation and/or damages to be determined in accordance with the local jurisdiction’s trademark
law and practice.
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iii) Alternatively, if the owner of the Business Identifier fails to comply with the
Competent Authority order within in the prescribed period, or if the court otherwise
directly issues an order for the Registrar to change, modify, amend and/or cancel
the Business Identifier, the relevant registry shall be empowered to change, modify,
amend and/or cancel the Business Identifier and shall publish a notice of the same
in e.g. the official gazette.
b) In carrying out actions under Article 3(1)(a)(i) and 3(1)(a)(ii), the Competent Authority
may consider the following options:
i)
removal of the infringing and/or diluting name and/or infringing or diluting
elements from the Business Identifier;
ii) replace the infringing and/or diluting Business Identifier with an alpha-numeric
designation.
2) Intentional Infringement: Acts of intentional infringement shall be subject to additional
penalties and/or remedies.
COMMENT TO ARTICLE 3(1)(a): Article 3(1)(a) provides that, to effectuate the needed
changes in the removal of infringing business identifier, the Competent Authority needs to be
empowered to order the Registrar’s removal of the Business Identifier and the Registrar must
have the power to remove it where there are appropriate grounds for doing so, such as a court
order or other recognized decision.
COMMENT TO ARTICLE 3(1)(b): Under Article 3(1)(b), it is important that the Competent
Authority have the flexibility to either order the removal of the offending elements or the
offending Business Identifier, or order the Registry to replace the offending Business Identifier
with an alpha-numeric designation. This last option allows the Competent Authority, if
necessary, such as if the business owner is non-responsive, to have the offending Business
Identifier removed, while allowing the owner of the Business Identifier the ability to replace
the alpha-numeric designation with a new non-infringing and/or non-diluting Business
Identifier at the owner’s discretion.
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