Night of the living dead brands: Beware the Zombie Trade Mark!
Halloween is just around the corner, and tales of monsters are all around. In this blog, Novagraaf’s Alice Wright dissects the monster that Trade Mark Attorneys fear the most.
Like all living dead, the Zombie Trade Mark appears to be alive on the outside, but instead lurks undead, just under the surface, in the shadows of the trade mark registry, waiting for the opportunity to wreak havoc on unsuspecting brand owners.
Rising from the grave: What Is a Zombie Trade Mark?
A Zombie Trade Mark is a registered trade mark that has not been used commercially for any or all of the goods or services it is registered for over an extended period.
Because Zombie Trade Marks sit on the trade mark register just like any other, to anyone searching the database, they look like living and enforceable trade mark rights, even though they have already lost all legal protection due to non-use and are effectively dead.
Indeed, in the UK and many other countries, legally dead Zombie Trade Marks continue to stalk the trade mark register for many years after they have died, casting a terrifying shadow over the registration and use of new similar trade marks.
The witching hour: Why the five-year rule matters
While trade marks can live forever, unfortunately, they don’t automatically do so.
Once a trade mark is registered, it must be put to commercial use in relation to all the goods and services against which it is registered to stay alive.
Most countries operate under a strict "five-year rule” meaning that once your trade mark has been registered for five years, if you have not put it to genuine commercial use, it becomes legally dead and, like all horror movie zombies, can be easily killed off.
A Zombie Trade Mark is unable to protect its brand from cancellation and, in the UK, for a small fee of £250, anyone can apply to kill it by filing a non-use cancellation action. This would lead to the mark being revoked and struck off the trade mark register.
However, until a brave brand owner takes the step of filing the cancellation action, an undead Zombie Trade Mark will continue to live on the UK trade mark register indefinitely, continuing to scare new trade mark applicants every time they appear in a UK IPO examination report.
Monster in your path: When someone else’s zombie blocks you
However, zombies are not just a problem when they are lurking in your own cellar.
They can stop your business from launching exciting new products or expanding into new markets. Indeed, many brand owners are often unaware that the trade mark blocking their path is in fact a Zombie Trade Mark.
Imagine finding the perfect brand name, only to discover an identical mark already registered on the official database, and yet an internet search reveals no sign of the trade mark anywhere.
Maybe the owner stopped trading years ago or never even launched the product. These are both telltale signs that the trade mark blocking your path is a Zombie Trade Mark, which you will need to kill off so that your mark can live.
Lurking in the shadows: Have your own trade marks become zombies?
Could your brand portfolio be harbouring the undead?
Businesses constantly evolve, rebrand, and discontinue product lines.
Perhaps you registered a catchy slogan or logo six years ago that you never launched, or maybe your packaging design changed, and the old version was quietly retired.
If five years have passed without genuine commercial use of your registered trade mark, that right may have already unwittingly become a Zombie Trade Mark without you even realising.
Worse, you might be wasting valuable budget renewing Zombie Trade Mark rights that offer your brand no enforceable legal protection. A truly frightening thought for brand owners and trade mark attorneys alike.
Ward off the undead: How to keep your trade mark alive
Keeping your trade marks alive requires both regular action and maintenance.
Here are three simple tips to protect your trade mark portfolio from the Zombie Trade Mark curse:
- Put your marks to use: Ensure that you use your trade marks commercially in the UK in relation to all the goods and services for which they are registered within 5 years of their registration date.
- Keep clear evidence: Retain dated invoices, brochures, website screenshots, and packaging showing your mark in active commercial use in the UK so if someone mistakenly accuses your trade mark of being a Zombie, you can defend it.
- Audit regularly: Review your brand portfolio annually to identify dormant registrations or missing protection regularly and update your trade mark protection so the trade marks you are using stay alive – and the dead ones you are not can rest in peace.
Do not face the monsters alone: Speak to an expert
Hunting the zombies lurking on the trade mark register does not have to be a horror story.
Whether you need to revive your brand strategy or remove a Zombie Trade Mark blocking the registration of your new mark, professional support can make all the difference.
A Chartered Trade Mark Attorney (aka a Professional Zombie Trade Mark Hunter) can both help identify Zombie Trade Marks blocking your new brand’s path and also help you review your trade mark portfolio to prevent Zombie Trade Marks from taking over. With their support, you can sleep peacefully, safe in the knowledge that all your registered trade marks are protected this Halloween Night.
Alice Wright is a Chartered Trade Mark Attorney based in the London offices of European IP firm Novagraaf.