Thursday, 29 January 2015

It's time to review your brands and trade marks!

When was the last time you reviewed your brand and trade mark portfolio in Australia and overseas? Are all of the brands used by your business protected by registered marks? Has your business expanded the goods and services it provides since your trade marks were registered? Have you tweaked your logo?

Now is the time to review your brand and trade mark portfolios. We have prepared a checklist to assist you to make sure your business is where it should be in respect of its brand and trade mark protection.

Have your goods and services changed?

In many cases, people are diligent about applying for trade mark protection at the outset of their business or upon the launch of a new product or service. However, once they receive the trade mark certificates of registration, they go in the bottom drawer or on the wall and individuals and businesses forget to review their goods and services during each 10 year period to make sure that the trade marks still reflect the goods and services being provided.

Many businesses evolve and expand their goods and services over time. Their trade mark registrations often however remain static and don’t cover the expanded goods and services. When it comes to building a suite of intellectual property (IP) assets and enforcement, it is much easier to enforce the trade mark if the goods and services are specified in the trade mark registration and you have a stronger IP asset as well.

We recommend that you review your current trade marks and ensure that all of the goods and services currently provided by your business are covered. If not, it is time to apply for a new trade mark application with broader specifications to capture the expanded goods and services. We can assist you with this.

Have your brands and logos changed?

It is important to review your trade mark portfolio at least once a year to see whether you are using your trade marks in the form that they are registered.

If your logos change, it is important to be aware that your older trade mark registrations may not protect you if the new logo is substantially different to the one that appears on the Trade Marks Register. Your old but now unused logo can also become vulnerable for removable for non-use leaving you with no trade mark protection at all.

We recommend that you review the brands and logos currently used by your business and cross-reference these with your brands and logos as registered.  If they differ, new trade marks are needed.  We can assist you with this.

Use it or lose it!

All trade marks are vulnerable to non-use applications if they have been registered for more than five years but are not used for a continuous period of 3 years in Australia.

If another trader has a legitimate interest in using a similar or identical trade mark, the third party may apply to the Trade Marks Register to have the mark removed on the basis of non-use. This is a commonly used tactic in circumstances where a trade mark application has not been accepted because of an existing prior registered trade mark.

What is the solution? As we detailed above, make sure your trade mark registrations cover the goods and services you offer and make sure you then use those trade marks as registered.

If you receive a removal notice for non-use or if your trade mark application has been objected to because of a prior registered mark, we recommend that you seek our assistance immediately.

Are you protected overseas?

Trade marks are registered country by country. If you intend now or in the future to expand your business overseas it is important to apply for protection in those overseas countries earlier rather than later but in accordance with your business plan and budget. There are some cost effective ways to apply for trade marks in a number of overseas countries at once if done at the same time. Lastly, some countries (notably China and Russia) have what is called a first to file system, meaning even if you are selling into those countries first, a trade mark squatter can grab your name and/or logo and hold you to ransom.

What should businesses do?

Brands and trade marks are important business assets and should be treated as such, just like the expensive machine that goes bing, the new bright shiny IT system or the large piece of mining equipment. Businesses should manage brands and trade marks as they would any other important asset. In a trade mark sense that means conducting a brief trade mark audit to see what is registered versus what you are currently using, then plugging any gaps with new trade mark applications. A system of monitoring along with the organisation’s style guide should also be implemented.

McCullough Robertson’s trade mark team is recognised as one of the leading practices in Australia by World Trademark Review, with practice group head, Malcolm McBratney named one of the top 1000 trade mark practitioners in the world. We are more than happy to have a chat with you regarding any of the above or related IP issues.

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