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
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
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.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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1.The trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent.
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