Getting a trade mark registered is an important milestone. Many businesses view the registration as the finish line. In reality, it is closer to receiving the keys to a valuable asset. What happens next determines whether that asset grows in value or becomes vulnerable over time.
Here are some key issues brand owners need to consider once registration has been achieved.
Use it or potentially lose it
In most countries, trade mark owners must ensure that their mark is used continuously in the course of trade or it risks being removed from the register. In New Zealand, a registered trade mark may become vulnerable to a non-use challenge if it has not been put to genuine use for a continuous period of three years or more after the date it was registered. A registration will not automatically be removed. A third party must take action to challenge it by filing a non-use removal action.
With IPONZ and IP Australia often raising earlier marks as objections during examination, filing non-use actions against earlier registrations is becoming a useful tactic for owners needing to overcome objections. Ensuring your mark is being used has never been more important.
As a safeguard, trade mark owners should keep records demonstrating how their marks are used in the course of business. This can include:
dated advertising and POS signage;
website pages;
packaging and labels;
sales records and invoices;
brochures and catalogues;
social media material; and
marketing campaigns.
This evidence can be valuable if your registration is ever challenged.
If commercial use is unlikely to occur for some time, it may be worth considering whether a new application is appropriate as part of a broader strategy. Specific advice should be sought based on the circumstances.
Correct use and marking
Marks should be used as registered and businesses should encourage consistent use by team members and the public.
For example, for a word mark, the brand name should be distinguishable from the common descriptor of the product or service such as “DYSON vacuum cleaner”. This prevents a trade mark from becoming generic. Well-known brands like ESCALATOR and ASPIRIN famously lost trade mark protection in some countries after becoming generic terms.
For a logo, use should match the logo as registered. If material design changes are being made to the stylisation or graphics, a new application may be required to ensure the revised logo remains protected.
Ideally, businesses should develop clear brand guidelines covering how their trade marks are displayed across all platforms such as websites, packaging, advertising and social media.
A common question clients ask is around the use of the ® and ™ symbols. The ® symbol should only be used when a trade mark is registered, while the ™ symbol can be used for registered and unregistered marks. There can be penalties for using the ® symbol on a mark in a country where it is not registered. Both symbols essentially do the same thing, that is, put others on notice that you are claiming trade mark rights. For this reason, clients will often use the ™ symbol so packaging and advertising materials do not need to change depending on whether the mark is registered in different countries.
Review your portfolio as the business grows
Businesses change. New product lines are developed, new markets entered, or other businesses can be acquired. Often, trade marks are used in ways that were not contemplated when an application was filed. Your trade mark portfolio should evolve with the business.
A periodic review should look at whether your current protection still reflects the business and if there are any gaps in that protection. A simple trade mark health check could include asking:
Are we protecting the most valuable brands?
Are our existing registrations broad in scope to cover our current business?
Are we using any important brands that are not registered?
Do we have registrations in all the countries where we now operate?
Have we introduced new products or services?
Have our logos changed substantially?
Are there trade marks we are no longer using which can be flagged for non-renewal?
This sort of review can proactively identify and fill in gaps.
Keep ownership details up to date
Ownership of registrations needs to be managed properly. Businesses should check that the registered owner is the correct legal entity. This can become particularly important after restructuring, acquisitions or divestments. New owner details and changes of address should be recorded with the relevant IP office. While it’s not mandatory to record these changes, it is best to do this sooner rather than later. Having the correct ownership recorded means you can efficiently enforce your rights against a third party if required.
Keep records
Aside from keeping records of your use, a business should also keep trade mark records such as certificates of registration, co-existence agreements, deeds of assignment and letters of consent.
If you are looking to sell the business, raise investment or licence your IP, due diligence will be required. The other party will often want to know what intellectual property the business owns, whether it is properly registered and whether there are any disputes or weaknesses associated with it. In most cases, your IP advisor will have copies, but some only retain copies for the required legal time period. While documents such as certificates of registration can be re-issued by IP registers, it often takes time and money to do that.
Monitor the market
Trade mark owners should actively monitor the marketplace and take appropriate steps to protect their rights against infringement. That means businesses should consider putting some form of trade mark watching system in place.
Depending on the size and importance of the brand, this might involve monitoring trade mark registers, competitor activities, social media and industry publications.
If there appears to be misuse by another party or something just feels “not right”, contact your IP advisor who can advise or also offer watching services.
A trade mark registration is the foundation not the completed building
Registration secures a place on the register, but the real value comes from what happens afterwards. Businesses that actively manage their trade marks are generally better positioned to protect their brands, support their growth and maximise value over time.