Each trade mark has its own life cycle. Initially, a logo or a name to be registered as a trade mark needs to be created; then a trade mark application is filed; the trade mark is registered; numerous renewals may be filed and renewal fees paid. With proper maintenance, a certain trade mark may exist forever. However, in practice, the majority of trade marks do not last that long.
But what happens if the proprietor of the trade mark ceases to exist earlier than its trade marks?
If we focus on legal persons only, under current Slovak law the following scenario is possible: a proprietor – a company – is dissolved, deregistered from the Slovak Companies Registry, but the trade marks owned by this dissolved proprietor continue to live their own life separated from the legal entity which initially owned them. During insolvency procedure, the trade marks owned by the insolvent company may be purchased and acquired by a third party, but it is often the case that there is no one willing to buy those trade marks. Hence, such “orphan” trade marks will continue to “live on” until the current registration eventually expires or until the trade marks are revoked for non-use. Given the fact that there is no trade mark proprietor to renew these trade marks anymore, the date of their expiration will be known in advance.
What are the practical consequences of this phenomenon? Does such trade mark “afterlife” affects other brand owners or new applicants wishing to register new trade marks?
In line with Slovak law and the practice of the Industrial Property Office of the Slovak Republic (the “IPOSK”), the IPOSK mandatory blocks trade mark applications on relative grounds in cases where a conflict is revealed with an earlier trade mark which is identical and registered for identical goods or services. In such cases, the IPOSK will notify the applicant of this conflict, and allow the trade mark application to proceed only if the applicant submits to the IPOSK an explicit approval to the registration granted in writing by the proprietor of the conflicting earlier trade mark. However, since the proprietor of the earlier trade mark no longer exists, it becomes objectively impossible for the applicant to acquire the approval requested by the IPOSK. As there is no other way around this problem, the trade mark application will be dismissed.
In light of the facts mentioned above, other brand owners and companies are significantly restricted in their access to such marks.
The registration is possible only once such trade marks expire and the previously protected marks become public domain again. In practice, this waiting period can last up to ten years. Apart from that, there is also a possibility to file an application for revocation of the given trade marks on grounds that the trade marks have not been used continuously for a period of five years.
Every year a considerable number of trade marks become trapped in this “afterlife” notwithstanding the fact that such a statutory set-up does not have any reasonable economic justifications. From a commercial perspective, it would be most welcome if the current legislation were amended in order to avoid this problem.
Legislative work on an amendment to the current Slovak Trade Mark Act is currently in progress, and it is to be seen whether the issue of trade marks separated from their dissolved proprietors will be resolved.