Time for a Trade Mark Audit!

Trade mark Audits can be done at regular intervals or ad hoc and are a tool to ensure the firm’s intellectual property accurately reflects the real needs of the business:

• - Making sure brands used are in fact protected
• - Taking a big picture view of the jurisdictions the marks need to be protected in
• - Identifying trade marks that could be allowed to lapse
• - Understanding potential non-use implications

Here, we will focus on non-use & advise on how to strengthen a TM portfolio from that perspective - you can read more on other considerations here.

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.

Further, having your mark cancelled means:

• - Potential re-brand - a costly endeavour that can harm the company brand loyalty
• - With others using the cancelled trade mark for lower-quality products/services, the original business's reputation could suffer, although it is no longer associated with the mark
• - Having to negotiate buying the troll’s trade mark right

Therefore, we always advise that:

• - Prior to renewal our clients take into consideration the next 10 years and their intent in the particular jurisdiction - oftentimes it is more useful to refile than renew!
• - Taking into account how comfortable with risk they are, deciding if the current protection is geographically wide enough

In some of the jurisdictions we cover - it is not uncommon for local firms to protect marks known in other jurisdictions (but not used in theirs), especially in Bosnia, Kosovo & Montenegro.

This is happening more due to easy access to popular marks through internet, travel or migration.

Contact us if you would like assistance in the audit of your portfolio in AL, BA, KS, HR, ME, MK, RS or SI!