AJPark

Here are some quick tips on how to avoid exposing your trade mark registration to attack.

The consequences of failing to use your trade mark

If you haven’t used your trade mark for three years or more, a third party could seek to revoke your registration. 

When it comes to revocation, the best form of defence is a good offence.  That means you must use your mark and use it properly.  To do this, you need to show that you made ‘genuine’ use of your trade mark in relation to the goods and services covered by your registration. 

The question then is—what amounts to ‘genuine’ use and why are the goods and services you have used your trade mark on important?

• Genuine use:  “Genuine use” means actual (not token) use that is enough to allow consumers to distinguish the origin of your goods or services.  For example, only using your trade mark within the  confines of your company is not regarded as ‘genuine’ use. 
  
  
• The goods and services:  It sounds trite but you need to use your trade on the goods and services covered by your registration.  If your use relates to only some of the goods or services covered by your registration, your registration may be narrowed to reflect this.  If your use relates to different goods or services, your registration may be revoked altogether. 
  

You can resume use of your trade mark at any time to avoid it being vulnerable to revocation.  However, any use within the last month will be discounted.  Your use must also be appropriate. 

The “to do list” for protecting your registration

You can ensure you make appropriate use of your mark by:

1. Checking the form of your mark. 

Use your trade mark in the way it appears in your registration. 

If your registered trade mark is a word mark in block letters, you can use it in different fonts without affecting your protection.  However, if you have protected a stylised version of your mark (such as a logo) then your protection is limited to the “look” of the registered logo.  If the logo you use differs from the one you have registered, you can compromise your protection.  

2. Staying distinctive 

Ensure your trade mark remains distinctive to you.  After all, it should convey  your ‘point of difference’. 

Use your trade mark capitalised or stylised, followed by the descriptive commercial name for the product in lower case.  Don’t pluralise or abbreviate your trade mark, and don’t use it in the possessive form.

For example, say “a range of SAVLON antiseptic creams are available”, not “a range of SAVLONS is available”.

3. Identifying your rights

The best way of doing this is by using the symbols ™ or ® on your promotional material and labels. 

If your mark is not registered, only use the ™ as it is an offence to use the ® for unregistered marks.  If your promotional material or labels are used in other countries, you should check that your use of such symbols complies with the local laws.

4. Enforcing your rights 

If you allow your trade mark to become the common name for the product, you risk losing your exclusive right to use your mark.  Trade marks lost in this way include ESCALATOR, TRAMPOLINE, LANOLIN, NYLON, and KEROSENE to name a few. 

The key is to monitor not only how you are using your trade mark, but how the public and others in the industry are using it.  If others are freely using your trade mark to describe the product, action should be taken. 

You carry the burden of ensuring your trade mark is used properly.

Revocation applications are a common tactic in today’s competitive marketplace so you need to keep a watchful eye on your trade mark portfolio.  If you regularly review your trade mark portfolio with the above “checks” in mind, you will not only be better positioned to identify any gaps in your protection but can also save money by culling those marks that are no longer important to you.

An edited version of the article was publsihed in FMCG, August 2009.