Use it or Lose it!

Use it or Lose it

No, this is not a warning from an officious rugby referee.  This is an implication of poor use of a registered trade mark.  How did Ugg boot remain an Aussie icon, why is Google not in the dictionary and what is the fate that befell Windsurfer? 

If a registered trade mark is not used in a bona fide fashion it may be liable for removal on the grounds of non-use. Therefore, if you have registered trade mark, and the mark has not been used by you, or on behalf of you, for a period of 3 years, an application for removal of the registration from the Trade Marks Register can be made.    This action may be initiated by an applicant whose trade mark is being held up by a registered mark or, as in the case off Ugg Boot, by a trader that has been issued with a notice to stop using a registered mark.

In addition the exclusive rights to a trade mark can also be lost if your trade mark becomes known as the generic name for your goods or services and ceases to be recognised as a trade mark.  There are numerous examples of trade marks being lost through non-use and/or inappropriate use.  In 2006 Wray & Associates were involved with the successful removal of the trade mark “Ugg-Boot” when it was shown that the trade mark owner, a US firm, had not used the mark for the past three years. 

There are a number of strategies to ensure that a trade mark is not lost through non use such as ensuring the mark is used in the manner that it is registered and records are kept of instances when it is used, for example, copies of advertisements and relevant literature.

According to IP Australia “if a trade mark contains or consists of a sign that indicates to persons in the relevant trade a product or service in general, rather than a product or service from one particular trade source, then it is considered to have become generic and loses its protection under section 24 of the Act.”  Some examples of trade marks that have become generic include windsurfer, pyrex and rubik’s cube

So what is the problem if your trade mark becomes generic?  Why would Xerox object to the term “xerox this” becoming synonymous with photo copying? Wouldn’t all sailboards being called “windsurfers” add value to the Windsurfer brand?  Far from it!  Such use constitutes use of a trade mark as a description of the goods rather than as a sign which distinguishes the goods from those produced by competitors.  Once the trade mark becomes an established description it loses its distinguishing characteristics. By losing ownership of your trade mark you lose the intellectual property rights to exclusively use that particular mark and anyone, including your competition, will be able to use the name.

How do you prevent a trade mark from becoming generic?  Google go to great lengths to prevent the term “google it” becoming the term for conducting an internet search.  Google constantly display their logo with the ™ letters and publish a document called “Permissions”, advising that the term can ONLY be used as an adjective, NEVER as a noun or verb.  If your trade mark is registered, the use of the ® symbol indicates that it is a registered mark.

In addition, the owners of trade marks can publish cautionary notices in publications such as the Australian Financial Review and issue warnings when they are aware their trade mark is being misused. 

Wray & Associates can also conduct “watching services” where we will conduct a regular check of the register of trade marks and advise clients if a registration has been made that may be deceptively similar to their own mark.

A trade mark is a valuable business asset and like all assets needs to be protected.  Appropriate use of the mark and careful monitoring of possible infringement or improper use are important elements of this IP strategy.