Use it or lose it – a little known fact about trade mark protection
So you’ve gone through the process of selecting the perfect brand name, instructing brilliant IP solicitors (you know who I’m talking about) getting through the opposition period and, finally, securing a trade mark registration. You sit back and marvel at the beauty of your trade mark certificate safe in the knowledge that you have secured a valuable monopoly which doesn’t need to be renewed for another 10 years (and can effectively be renewed indefinitely)… feeling pretty smug right? Well yes, you do have a lot to be pleased about, a trade mark is an extremely powerful intellectual property asset however, simply completing the registration process doesn’t guarantee perpetual protection… in fact in the UK and EU you’re only truly safe for 5 years. Actually, in other countries this time period can be much shorter and statements of use are often required on a regular basis but, for the purposes of this article, let’s keep things local.
For those not in the know this may come as quite a shock. But in reality, as soon as your trade mark has been registered for more than 5 years it’s vulnerable to a non-use cancellation action from a third party.
Who would do such a thing I hear you ask? Lots of people actually, and particularly those who appear to be infringing your trade mark. Essentially, they have an easy defence to an infringement claim if they can show that your trade mark isn’t actually in use and they successfully remove it from the register.
It’s important to bear in mind that “use” in this in context is interpreted strictly. For example, if you registered a logo some time ago but have now changed or slightly updated your branding (something which most businesses do on a regular basis to keep up with market trends) your old logo, and existing trade mark, will no longer be deemed to be in use. That means that unless you have secured a separate registration for your new logo, or a word mark, you will be left with trade mark protection which is effectively unenforceable.
In fact, use can be even more problematic in circumstances in which you have secured broad protection for a range of goods/services but have only actually sold some of these goods/services. For example, it’s very common for brands in the fashion industry to cover the goods of clothing, footwear and headgear in class 25 but if they have just stuck to shoes, their protection for clothing and headgear could be revoked.
So what to do? Well the main thing is to conduct audits of your intellectual property rights on a regular basis (and at least once a year). Important questions to ask are:
– Which registrations are currently, or are about to be, vulnerable to non-use?
– Do all of the registrations reflect your current branding?
– Are all of your goods/services currently in use?
– Do you have sufficient evidence of your trading activities?
– Do you have any branding or goods/services which aren’t specifically protected?
Luckily Briffa is on hand to assist you with this and we regularly carry out IP audits for our clients. So, if you’ve been affected by any of the issues raised in this article and need someone to talk to, please just get in touch.
Written by Will Miles, Solicitor