7 May 2020 | Jennifer McEwan, WRAYS
Does your business have a cupboard full of trade marks;
- which have been registered for years and years?
- that have not been used in a long time or at all?
- that the business has no intention to use in the future? or
- which are not being used for all the goods or services for which they are registered?
If the answer is yes to a number of these questions, then it may be time to declutter or clear out the trade mark cupboard.
Why is this important?
To keep a trade mark registration in force, it must be renewed every 10 years. Maintaining the registration of trade marks can be a costly exercise. The current official fee in Australia to renew a trade mark online in one class is $400. So if a mark is registered in a few classes, the costs of renewal add up very quickly. If the mark is also registered internationally, separate renewal fees per class will also have to be paid to keep the registrations in force. Even if you hold an International Registration under the Madrid Protocol, separate renewals fees are payable on a country by country basis.
It therefore makes good commercial sense, especially in these COVID-19 pandemic days where every dollar counts, to only expend on costs for trade marks that are being used, or at the very least, where there is an intention to use the trade marks in the foreseeable future.
If a trade mark is not being used at all or not used for all the goods or services for which it is registered, then it may be vulnerable to cancellation by another party. So where a trade mark is challenged on the basis of non-use, if evidence of use of the trade mark cannot be provided in the relevant country, the registration may be cancelled totally or in part.
Also, just keeping track of what you have in the trade mark cupboard can be a time consuming exercise and time is often not on our side in today’s increasingly pressured and busy world. A streamlined cost effective approach, paying for what you use and need to hold onto, is key to smart trade mark portfolio management.
What you can do?
Put some time aside, do an audit of what you have in the trade mark cupboard. Look at each registration individually and critically and ask the following questions:
- Is the business using this trade mark?
- If the trade mark is a logo or in a stylised form, is it being used in that form?
- Look at the classes covered and ask if the mark is being used or likely to be used for all the classes?
- In case of any overseas registrations, is the business using the trade mark in the relevant country? If not, is there any likelihood of commencing or recommencing use in the foreseeable future?
Is the business using any trade marks that are not presently registered?
After the audit is completed, you are then in a position to make a strategic decision of what trade marks to maintain for what classes and which ones will not be renewed. The audit may also allow you to identify if there are any marks which should have been registered but which are not, including in any key countries which can result in exposing your business to potential risks, especially in countries where trade mark rights accrue to the first to register, for example, China, Japan and Korea.
What are the potential benefits of the exercise?
- May save the business money which is especially important in current times
- Any money saved can be re-directed to protecting new trade marks or other valuable intellectual property, particularly in the current environment as businesses pivot their commercial offerings to service their customer’s needs
- Allows you to strategically protect and maintain valuable trade marks that are being used and make sure they are protected for the right goods and/or services
- Abandon trade marks that are not being used or not likely to be used in the foreseeable future
- When you declutter, you may find lost treasures which can result in reviving an old brand
- Can generate a sense of confidence and reduced anxiety knowing everything is in order and that your key marks are registered for the classes of goods or services for which they are used and in the countries of use.
Jennifer McEwan
Trade Mark Specialist, Wrays