Can I lose my trade mark?
Chartered Trade Mark Attorney Adam Kellett shares five ways you could actually end up losing your registered trade mark rights, and how you can avoid doing so.
Congratulations! You've successfully made it through the trade mark application procedure, and your trade mark has been officially registered.
This certainly feels like a conclusion, but it isn't the end of the story. Chartered Trade Mark Attorney Adam Kellett shares five ways you could actually end up losing your registered trade mark rights, and how you can try to avoid this.
1. "Use it or lose it"
You need to use your trade mark if you want to prevent your registration becoming vulnerable to cancellation. Once your trade mark has been registered for at least five years, a third party could seek to have your registration revoked (cancelled) if you haven't used the mark in the last five years.
The use has to be part of a genuine attempt to create or maintain a market share for the goods/services concerned.
It also needs to be use of the mark as registered. Variations between the mark as used and the mark as registered will sometimes be OK, as long as the distinctive character of the mark remains the same. If the appearance of your mark changes over time, you should consider whether any new trade mark applications might be needed.
The use needs to be for the goods/services covered by the registration. A registration can be partially cancelled if there has been use for some of the goods/services, but not for others.
The use also needs to be in the relevant territory – e.g. the United Kingdom in the case of a UK trade mark registration.
If there are “proper reasons” for the lack of use, this can prevent a registration from being cancelled. However, these reasons need to relate to factors beyond your control, such as regulatory obstacles and requirements.
2. Genericide! Your mark could become a generic term
"Aspirin", “linoleum” and “yo-yo” were once registered trade marks, identifying specific brands of goods, but are now seen as the generic names of products (in some countries, at least).
A trade mark is a badge of commercial origin. Once marks have become generic, they can no longer differentiate between different traders’ goods or services, and no longer function as trade marks.
The process of a trade mark becoming generic is sometimes known by the dramatic sounding name "genericide".
Things which can lead to genericide include allowing a mark to be used as a verb, e.g. "to Hoover the carpet", or as a noun rather than an adjective, e.g. “a Hoover” rather than “a Hoover vacuum cleaner”. It is often the most famous household names which are at risk of genericide.
A third party could try to have your registration cancelled if, as a result of your actions or inactivity, the trade mark has become the common name in the trade for the goods/services covered by your registration (i.e. has become generic).
You need to make sure you don't use your mark in a way which causes it to become generic for your goods/services.
You also need to take all reasonably practicable steps to stop others genericising your mark, such as stopping infringements, controlling licensees' use, and educating the public.
Velcro recently sought to do so via some YouTube videos.
3. Could your mark become misleading?
If, as a result of your use, your trade mark has become liable to mislead the public, particularly as to the nature, quality or geographical origin of your goods/services, a third party could seek to have your registration cancelled.
For example, the trade mark MÖVENPICK OF SWITZERLAND was cancelled because the goods concerned were produced in Germany, rather than Switzerland.
A mark which, for instance, suggests the goods are made of a particular material, could be deemed to have become misleading if used for goods of a different material.
If your trade mark registration is declared invalid, it means it should never have been registered in the first place, and the registration is deemed never to have had effect.
A trade mark registration can be invalidated on the basis of a conflict with an earlier intellectual property right. This could, for example, be someone else’s registered trade mark or a right protected under the law of passing off.
Other reasons that a trade mark registration should not have been granted (and could therefore be invalidated) could include that, when the trade mark application was filed, the mark was descriptive of the goods/services or a characteristic thereof, or was non-distinctive for other reasons. An example would be registering “sports shoe” for trainers.
These types of issues usually play out during the application process, though they might only come to light after your trade mark has been registered.
For instance, the owner of a conflicting earlier right might not become aware of your application until after it has achieved registration, in which case their only way of removing your trade mark from the register would be to try to invalidate (or revoke) your registration.
Searches carried out by a Chartered Trade Mark Attorney before applying to register your trade mark can help to identify earlier trade marks which could pose problems for you.
5. Don't forget its birthday!
It's crucial to remember to renew your trade mark registration, paying the applicable fees. Otherwise, your registration will ultimately lapse irreversibly.
A UK trade mark registration needs to be renewed every 10 years, on the anniversary of its filing date.
It’s important to ensure that your contact details are kept up to date on the trade mark register and, if appropriate, your Chartered Trade Mark Attorneys’ records, to ensure that you receive renewal reminders at the appropriate time and deadlines are not missed.
While you're probably more likely to lose your house keys than your trade mark registration, there are certainly a few pitfalls to steer clear of, to avoid losing your trade mark rights.
If you are concerned about losing your registered trade mark rights, and would like some expert advice, contact a Chartered Trade Mark Attorney.
Trade Mark Attorney, Dehns