IP Cases & Articles

Post Trade Mark Registration Considerations

Trade marks are due for renewal every 10 years following registration and are subject to the payment of a renewal fee. Once a mark is registered it can be renewed indefinitely. There is a six-month grace period from the expiry date of the registration with the payment of a late renewal fee. If the mark is not renewed during that time it is removed from the Register. It can be restored to the Register within a further six months (12 months from expiry) with good reasons for the non-renewal and the payment of a restoration fee and late renewal fee.

Non-use

If the mark has not been put to 'genuine use' for a continuous period of five years by the owner (or with their consent), and there are no proper reasons for non-use, it will become vulnerable to challenge on the grounds of non-use. If the registration is a CTM, use of the mark in just one of the 27 member states may be sufficient to amount to “genuine use”. Use does not necessarily need to be significant. However, it should not be 'token' or 'sham' according to current case law.

Best practice

There are certain best practice rules that trade mark owners should attempt to follow:

1. Use the TM or ® symbols
The TM symbol can be used alongside a mark at any time, even if the mark is not registered. It shows that the mark is being used in a trade mark sense to identify products or services. Once a registration is obtained, it is possible to use the ® symbol to make it clear to others that there are statutory registered rights attached to the mark. This acts as a form of deterrent to third parties. It is an offence to use this symbol if the trade mark is not registered. It is also advisable to use a statement indicting that the trade mark is the property of the proprietor.

2. Set up a watching service
It is recommended that a watching service is set up in each country of interest to monitor any misuse of similar or identical trade marks by third parties. D Young & Co can set this service up at a low annual cost and provide as little or as much advice as necessary on potentially conflicting marks which are identified. For further information, please contact your usual D Young & Co advisor.

3. Register a domain name
If this has not already been done, the registration of a corresponding domain name in the relevant territory is a cheap and often valuable asset to seek. Further information on domain names is available in D Young & Co article "How to Challenge a .co.uk Domain Name" and in the D Young & Co Domain Names Primer (see linked resources, right).

4. Do not alter the form of the mark
A trade mark must be used as it is registered at all times. If material changes are made to the way the mark is used, a new application may be required. Proprietors should avoid using hyphenations and abbreviations. If a word mark is used alongside a logo, proportions should be consistent with the registered trade mark. If a challenge is made on grounds of non-use it may well succeed if the mark has been used in a form which significantly differs from the registered mark.

5. Use word marks as adjectives
Grammatically, a word mark should always be used as an adjective and never as a noun or a verb. This prevents the mark from becoming generic or commonplace, which could threaten the scope of protection and enforceability of the mark. For example HOOVER being used in the form “I hoovered the carpet”. This is mis-use of the registered trade mark HOOVER.

6. Distinguish the trade mark from other text
For word marks, distinguish them from surrounding text where possible by using an alternative font, colour or bold or underlining to set them apart from surrounding text.

7. Retain evidence of use
Unforeseeable disputes can arise post registration. Whether the action is incoming or against a third party, the strength of each case often depends on the availability of evidence that the mark has been used in relation to the goods and/or services for which it is registered. Third party evidence such as newspaper references or industry awards won is given more weight than internal evidence. It is essential that records are kept and if facilities are not available to keep such information, D Young & Co has a user-friendly electronic storage facility and your usual advisor will be able to provide further information.

8. Affix the trade mark to the goods or services
Trade marks should be 'affixed' directly to products or their packaging where possible. This might be on tags, labels or the actual goods themselves. Trade marks should be clearly used in relation to services on signs, advertisements, letterheads, invoices and any other materials associated with the mark.

Assignment/licensing

UK trade marks can be assigned or licensed to another individual or entity either with or without the goodwill associated with the mark and in relation to some or all of the goods or services for which it is registered (or in relation to the use of the mark in a particular manner or locality).

Assignments and licences must be in writing and signed by or on behalf of the assignor or grantor. It is advisable (although not compulsory) to record an assignment or licence at the Intellectual Property Office as soon as possible for it to take full effect and to be enforceable against third parties. This applies in most countries. A CTM can only be licensed as a whole and it is not possible to partially assign the mark in specific member states.

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