Trade marks: Use it or lose it

A registered trade mark grants its owner the exclusive right to use that mark in connection with specified goods and/or or services.

A registered trade mark grants its owner the exclusive right to use that mark in connection with specified goods and/or or services.

However, if the owner fails to use the trade mark for three consecutive years, a person can apply to have that trade mark removed from the register.

A trade mark is used if it is used (in good faith) to distinguish the owner’s goods and/or services from those of others.  A single use over a three year period may be sufficient to evidence use, so as to avoid removal.

However, it is vital that the registered trade mark is owned by the correct entity. For example, if the registered trade mark is owned by the wrong entity, then that entity cannot be said to have used the mark. Therefore, even if another entity has used the mark within the three year period, the trade mark remains at risk of removal.

A similar issue can arise where a trade mark is registered to an entity within a corporate group, yet another entity (within the group) actually uses the trade mark. Absent a written licence agreement between the two entities, the trade mark may be vulnerable to a non-use application.

To mitigate this risk, it is important to prepare written licence agreements between those entities in order to demonstrate that a sufficient level of control is being exercised by the licensor over the licensee. This may include strict quality control requirements to which the licensee must comply (in relation to the relevant goods/services).

Although a court has a discretion not to remove a trade mark for non-use, this discretion cannot be relied upon and every effort should be made to ensure your mark is validly used.

Lavan Comment

Although trade marks may appear relatively simple, there are many technical issues that may arise which can result in loss of your registered trade mark rights.

One such technicality is removal for non-use.

We recommend taking the following steps to avoid non-use:

  • continuing to use your trade marks, even when there are breaks or delays in trading (for whatever reason);
  • keeping contemporaneous records of your trade mark use, should they be required as evidence in a non-use application;
  • making sure that your trade marks are owned by the correct entity; and
  • preparing written licence agreements with any entity you authorise to use your trade marks.

If you require advice in relation to non-use, or trade marks generally, do not hesitate to contact Iain Freeman or Andrew Sutton.