Do You Review Your Trade Marks?

There are some key issues that should be kept on the radar of all trade mark owners. In particular, there are two areas that are easy to overlook, but which are an essential part of maintaining a healthy trade mark portfolio.

Regularly review any unregistered trade mark or new trade marks

If you are already using a trade mark commercially, but haven’t protected it by registration, consider filing new applications. The enforcement of a registered trade mark against would-be infringers is significantly easier and cheaper than having to rely on unregistered rights.

Remember that the registration of a company name or a domain name does not confer any trade mark protection, and while unregistered trade mark rights will build up through use, this can be a very slow process that does not always put you in a position of being able to enforce those rights against third parties.

Where new brands are being considered, put in place the necessary research, especially trade mark searches, at the earliest possible date, in order to identify potential obstacles to use and registration before committing to, and investing in, a new brand.

Don’t forget the older trade marks

All registered trade marks must be put to genuine commercial use within a defined period from the registration date, usually three or five years.  If this hasn’t happened, and there is no good reason to explain the lack of use, the registration becomes vulnerable to non-use cancellation by any third party.  Cancellation can be total or partial, depending on the extent of use.  This vulnerability means that the registration is no longer enforceable, as the other party would simply counterclaim for non-use cancellation.  In other words, the registration becomes effectively useless.

When a registration is approaching its non-use date, but isn’t being used for all of the goods or services covered by the registration, consider whether it is possible to start using or expand the use of the mark, or make genuine preparations to start using it?  If not, and where there is a commercial need to maintain the registration, the only option is really to file a new application for the mark, which will re-start the relevant use period.

European trade mark registrations are particularly tricky when it comes to use, as if the EUTM has only been used in one of two member states, then irrespective of how genuine the use is, it will not be sufficient to support the pan-EU registration.  If you are in a position of owning a EUTM that has only been used in the UK, and the five year non-use date is approaching, then as well as considering whether the use can be expanded, think about whether – realistically – national trade mark protection in selected countries might be more appropriate for your business.

For further information or advice on new brand names or your existing trade mark portfolio, contact us.

Tidman Legal is an Edinburgh-based firm of specialist trademark lawyers.