AJPark

Keeping a trade mark registration in force and in use correctly, plays a much greater part over a longer period of time than simply just securing a trade mark registration in the first place.

Because the timeframe for securing a trade mark registration can take time, sometimes many months to achieve, owners focus all their efforts on getting the certificate of registration.  Yet when you reflect back on the lifespan of a trade mark, the registration timeframe is only a small part as a registration can last forever!

Renewing your trade mark

Trade marks can last forever, making them one of the most durable intellectual property rights a business can own.  But to keep it in force, a registration must be renewed at ten yearly intervals.  To ensure that you don’t miss the renewal date you need to have systems in place to make sure you are reminded about the upcoming renewal date.  If you have registered your trade mark through an attorney firm, they will remind you, but you need to make sure you update them with any changes to your address and other contact details, otherwise reminders may not reach you.

If a renewal date is missed, it is possible to restore a registration up to one year after the renewal date has passed.  If you don’t realise that your trade mark registration has lapsed until more than one year has passed, you will need to repeat the registration process from the start.

Whether registered rights are still available to you will depend on several factors.  These include whether another party has applied for the same or a similar trade mark during the time your trade mark had lapsed and whether you have continued to use your trade mark.

Using your trade mark correctly

You must use your trade mark correctly to preserve your protection. Always use your registered trade mark in the way it appears in your registration. 

If you want to change any of the important elements of  your trade mark, like its colour, graphics or words, you should seek advice on the impact those changes will make to your registration.

You can change your trade mark in ways that do not substantially alter the trade mark without compromising your trade mark protection.  For example, trade marks registered in block letters may be used in other fonts - but caution should be exercised because some fonts are highly stylised and completely alter the presentation of the trade mark.  If in doubt, check it out! 

Keeping your trade mark distinctive

Over time, trade marks can become generic when the public uses them as the name to describe a product or service.  Trade marks like ESCALATOR, TRAMPOLINE, LANOLIN, LINOLEUM, KEROSENE and NYLON have been lost this way. 

The risk of your trade mark becoming generic is greater for new types of products. This is because there is often no existing descriptive commercial name for your product.  So you will need to coin one, use it consistently and enforce its use.

Rules exist for ensuring your trade mark is used correctly and does not become generic.  For example, trade marks should never:

(a) be pluralized
(b) be used in a possessive form
(c) be used with any description other than the proper descriptive commercial name
(d) be abbreviated, or used with other terms

Under New Zealand’s trade mark law, a trade mark registration may be cancelled if it becomes generic.  Revocation can happen if your trade mark becomes a commonly used name for the product or service the trade mark is registered for.  It is, therefore, critical to watch use of your trade mark not only internally, but by others.  ‘Media watch’ searches can help.

Trade marks can be revoked if they are not used.  A trade mark should be used on the goods or services your registration covers.  And must be used for a continuous period of three years following the actual date of registration.  It’s a case of use it, or you could lose it!

Last but not least

If your trade mark is registered, you should show its status on promotional materials, labels, packaging and so on.  Use the words ‘registered trade mark’, or the symbol ®. 

If your trade mark is not registered or is the subject of a pending application, use the words ‘trade mark’ or the symbol ™. 

Your trade mark is a valuable asset.  Look after it right to the end, or it may not last the distance.

An edited version of this article was published in Her Business, October 2009.

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  Corinne Blumsky

  Partner