How important it is to keep the information on trademark registration up to date
- It is impossible to protect your rights effectively
- The trademark is not actually used, which violates the law
- Unfair practices of competitors
- It is impossible to enter the trademark in the Customs Register
- Problems when placing outdoor advertising
- Failure to enter into licence agreements, assignment and franchise agreements, trademark pledge agreements
- Claims from third parties or non-core regulatory authorities
- Conclusion
In our world full of bright and varied trademarks, trademark owners often forget about one important detail: keeping their registration information up-to-date. It seems like a mere formality to be ignored. But let's find out how important it is.
Think of your favourite products and brands - the Apple or Coca-Cola logo, for example. These symbols have become incredibly valuable assets for companies. But what if the owner of these brands suddenly changed their name or address? What if they forgot to update their registration? This could lead to chaos and the loss of their brand protection.
A trademark is registered for 10 years with the opportunity to renew it repeatedly each time for another 10 years. That is, if renewed in due time, the trademark may in fact be indefinite, reaching dozens or even hundreds of years, if the company is interested in maintaining and preserving it in its original form.
Over such a long period of time, various and repeated changes may occur to the applicant, in particular, the name of the owner itself, the legal form of the company, the registered office, and so on may change. All of these changes need to be entered in the trademark registration, and we will tell you why.
It is not feasible to describe all the possible problems that may arise in this regard, but a couple of illustrative examples are.
It is impossible to protect your rights effectively
If the register contains irrelevant details of the trademark owner (e.g. a name of the owner that no longer exists), any unscrupulous person can use such a trademark without risk of a claim, as the right holder does not actually exist.
Any unscrupulous person may ignore claims from the actual owner as long as the trademark register is not amended accordingly. Either the owner of the trademark or the person to whom the right to use the trademark has been transferred under an exclusive licence agreement may file a claim for infringement of the exclusive rights to the trademark.
The trademark is not actually used, which violates the law
In Belarus, as in many countries around the world, any third party has the right to seek cancellation of registration of a trademark through the courts if the trademark has not been used by its owner for a certain period of time without valid reasons.
That is, any interested person may bring an action before the Supreme Court of the Republic of Belarus for the early termination of a trademark, and the trademark may be cancelled if:
- this person can prove that there was no use of the trademark by the owner of the right during the specified period without a valid reason
- that person is ready, willing and able to use it and has already made the necessary preparations (in particular, has applied in their name and been refused registration).
As the issue of ownership of the trademark rights against which an early termination suit is filed will arise before the court, the question of the existence of the right holder themselves will be raised as a consequence. When it turns out that the trademark owner listed in the register does not exist, the decision may be taken in favour of the plaintiff. Trademark may be lost.
Unfair practices of competitors
A situation may arise where a competitor discovers that the trademark register contains irrelevant information about its owner, takes an extract from the trade or company register that the right holder mentioned in the trademark register no longer exists, and applies to the patent office or court to cancel the trademark on this ground.
It is impossible to enter the trademark in the Customs Register
If the trademark owner wishes to stop the supply of counterfeit goods from other countries using their trademark with the help of customs authorities, they will not be able to do so, as only the right holder can do so. Customs authorities, when considering an application for inclusion of a trademark in the customs register, will check the ownership of the rights to that trademark and the relevance of the data on its owner. Any discrepancy in the information will result in refusal of customs procedures and acceptance of the application.
Problems when placing outdoor advertising
In Belarus, if the advertisement is not in the Belarusian or Russian language, but for example in the Latin alphabet, the competent authorities will require proof of registration of the trade mark or at least an application for it, i.e. proof of rights to use it.
For this purpose, the advertising approval authorities may require either a trademark certificate from the right holder (if the advertiser is the right holder) or a licence agreement (if the advertiser is the licensee). Without such confirmation, the placement of outdoor advertising signs, for example, will not be approved, and the placement of outdoor advertising without approval is subject to administrative fines.
Failure to enter into licence agreements, assignment and franchise agreements, trademark pledge agreements
Suppose the owner of a trademark has expressed a desire to transfer the rights to use it on a certain territory to a third party in order to receive a certain percentage of its use. An interested party has been found who has agreed or has expressed a desire to operate under the owner's trademark, and the parties have decided to enter into a licensing agreement for the use of the trademark.
In Belarus, as in many other countries, contracts in the field of intellectual property are subject to mandatory registration and are considered invalid without it, and it is this registration that gives validity and security to such contracts and is the basis for claims and appeals to court, including in case of breach of contract terms, for example in terms of remuneration (royalty) for use of the trademark.
When registering the contract, the Patent Office checks the terms of the contract for compliance with intellectual property law as well as verifies the details of the trademark owner as stated in the contract against those in the register. If the information differs, the contract will not be registered until the contract is amended accordingly.
Let us assume that a trademark owner has entered into some verbal or improperly documented agreements with a third party regarding the use of their trademark, and decides not to register the agreement. At any time the parties may change their minds (partners may fall out, the composition of the parties may change, States may impose sanctions) and without a validated right of use (registration of a licence), the trademark user may find themselves in a situation where the trademark owner may make a claim against them.
A properly executed and duly registered contract guarantees safe and lawful use of someone else's trademark.
Claims from third parties or non-core regulatory authorities
Although claims of illegal use of a trademark can be made directly by the owner, the regulatory authorities have the power and authority to check the details of the alleged infringement of the law.
Other persons (not just the owner) may obstruct the business and report information (allegations) to the regulatory authorities about:
- the unauthorised use of a trademark. Regulatory authorities have the right to issue an injunction to rectify infringements of any legislation. A fine will be imposed if the injunction is not removed;
- unfair competition. For example, that a company misleads consumers and customers into believing that it owns a trademark through misuse of the trademark, with no documentation;
- failure to pay taxes to the budget. For example, there are no royalty payments and the foreign person does not pay taxes to the budget because the contract has not been registered and the relationship is between inappropriate parties, which will also lead to liability.
Inspections by internal, antitrust, tax, State Control Committee, prosecutors and other regulatory authorities may be ordered on the application of any person. Even if no violations are found, it should be taken into account that inspections can "paralyse" business operations.
Conclusion
If a trademark is needed and important to its owner - information about the owner needs to be kept up to date, i.e. in a timely and straightforward manner to amend the trademark registers, which we will be happy to help you with.
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