The forgotten trade marks: Bona Vacantia
What happens to trade marks when the owner no longer exists?
When looking to use and register a new trade mark Bona Vacantia should not be overlooked.
If you come across an old trade mark registration similar to yours, one of the first things you should do is check whether the owner of the trade mark right concerned still exists.
If the owner no longer exists, then it is quite possible that the registration may have reverted to ‘the Crown’ via Bona Vacantia.
This means you can buy the registration and continue to use your trade mark.
What is Bona Vacantia?
Bona Vacantia is a Latin word that translates as ‘ownerless goods’ in English.
In the United Kingdom, when a company is dissolved, without its assets being assigned first, or a person dies without heirs, their assets revert to ‘the Crown’ via Bona Vacantia - the Crown being the government headed by the Queen.
The Crown can then sell those assets to the highest bidder for its benefit – or maybe to you.
How does it work?
You should speak to a Chartered Trade Mark Attorney about writing to the relevant Bona Vacantia division making it clear what trade mark registration(s) you are interested in buying and providing details of the dissolved owner.
The relevant division will then write to the last address of the dissolved company enquiring whether the trade mark registration was assigned prior to dissolution.
If the division does not receive a response from the old owner, you can negotiate with the relevant division about a price to pay for the transferred registration.
Who deals with Bona Vacantia?
For most of England and Wales, the Bona Vacantia Division of the Government Legal Department (GLD) deals with applications to buy trade mark.
The Isle of Man has no Bona Vacantia Division within its government, so the GLD also deals with trade marks in the Isle of Man.
Due to the ancient quirks of law, any applications to purchase trade marks which belong to dissolved companies in Duchies of Cornwall or Lancashire are managed by the Queen’s solicitors Farrer & Co
For Northern Ireland, you must apply to the Crown Solicitor as the Treasury Solicitor's agent.
And in Scotland, Bona Vacantia is administered by the Office of Queen's and Lord Treasurer's Remembrancer.
Companies under the laws of the Channel Islands have corresponding divisions under their own governments.
Is there a ‘going rate’?
The value can vary, particularly for trade marks that are in a competitive market.
It is important to remember that the duty of the relevant Bona Vacantia Division is to get maximum value for the Crown. Working with a Chartered Trade Mark Attorney can help you manage costs.
Bona Vacantia Divisions can enter into a valuation process and for you to justify a purchase price which is why having the experience of a Chartered Trade Mark Attorney can prove valuable when making negotiations.
What happens after negotiation?
The relevant Bona Vacantia Division will prepare the assignment document for you.
This is a document used when transferring trade marks from one owner to another.
The trade mark registration will be assigned, but without full title guarantee because it is based on very limited investigations.
An assignment document can be challenged at a later date if the trade mark registration was assigned prior to the dissolution of the company concerned, although we are unaware of any such instances.
Who records the trade mark assignment?
The purchaser will have to record the assignment.
This is where using a Chartered Trade Mark Attorney will be of help. A Chartered Trade Mark Attorney will be able to record the trade mark assignment speedily for you.
Speed is important when using Bona Vacantia.
If the trade mark registration is over five-years-old, you should plan to use the trade mark as soon as possible to avoid cancellation on the basis of non-use by a third party.
Don’t forget to consider Bona Vacantia
Trade mark registrations subject to the concept of Bona Vacantia can be exceedingly useful and should be forgotten no more.
Using a Chartered Trade Mark Attorney to take you through this process will speed the process up and will help you secure your right to use your chosen trade mark all the quicker.