November 7, 2024
In our IP world of competitive markets, multiple brands and financial responisbility – it is important to have a real time understanding of what brands are actually in use, the protection they have both in terms of jurisdictions and goods/services – combined with future business development strategy & firm’s propensity for liability.
Going through a trade mark audit enables the team to:
– Identify core brands and decide if their current coverage is in line with business strategy
– Identify marks that can be alowed to lapse
– Identify any marks used but not yet protected (widly enough)
This will in turn steinghten the TM portfolio, as it will not be vulnerable to infringers or cancelation due to non-use; it will be suitable as basis for Market inspection or Customs protection in seizure matters and it will be strong for any potential licensing deals.
Motion for cancellation due to non-use can be filed 5 years after registration date or 5 years from date of last known use, by an interested party – for all or some goods or services protected.
This motion is sometimes initiated legitimately, but at times, filed when trade mark trolls decide to appropriate other’s rights.
TM that is not in use (as a whole or in part) is less than useful, as it can be successfully cancelled and cannot be the basis of an opposition against a later right.
Vulnerabity to a motion for cancellation due to non-use, is explored in more detail in our – “Time for a TM Audit” article.
Further, only registered trade marks can be a basis for petitions for Market or Customs protection.
Customs protection plays a critical role in preventing counterfeit and infringing goods from entering a country’s market, ensuring that only original products are imported and sold.
Market protection focuses on ensuring that registered trade marks are defended against infringement or unauthorized use within the domestic market.
By combining these measures, businesses can protect their trade marks and ensure that they remain valuable assets in the marketplace and preserve their brand’s reputation.
Lastly, when time for renewal comes – the team needs to decide if the mark should be allowed to lapse, if it should be renewed or in some cases if the best course of action would be to refile the mark.
Refiling of the trade mark is useful if the mark is not being used or the representation of the mark as used has changed from the initial application, it will afford the company the following benefits:
– to better represent the way the mark is being used
– owners name/address change (if any) can be recorded at no expense
– the list of goods and services can be altered
– a new non-use term starts from the date of this new marks registration
We hope to have given you enough to contemplate and we remain here to assist you with your TM portfolios!
