Use it or lose it

Keeping your registered trade marks secure is an important part of protecting your intellectual property. Lisa Egan details the finer points.

Registering trade marks is an integral part of brand protection.  Provided that the trade mark continues to be used consistently and in connection with the goods and services for which it is registered, trade mark protection can potentially be indefinite.

Once a trade mark achieves registration, the trade mark is registered for a period of 10 years from the date on which the trade mark was filed, which can then be renewed every 10 years for a small fee.

This is a powerful means by which brands and business owners can assure the stability of their brands in the marketplace.

However, to ensure that your registered trade marks are not vulnerable to attack, the marks must be used in a way which is consistent with the version of the mark as registered. 

If a registered trade mark is not “used” for a continuous period of 3 years after registration, it is liable to be removed from the Trade Marks Register if a third party challenges the registration.

A recent High Court decision has emphasised the need for trade marks to be used by the trade mark owner in substantially the same form as they were filed in order to successfully overcome such an attack.

A case in point

In a recent High Court case, the Court held that use of the word BAREFOOT in combination with a graphic of a bare foot (as depicted on page), was use of the plain word trade mark BAREFOOT as registered.  The trade mark was challenged for non-use by the makers of “BAREFOOT RADLER” beer, and the challenger argued that the trade mark had not been used in the form registered (as it appeared not as a word alone, but with a graphic element as well) and should therefore be removed.

However the Court held that the “use” in evidence showed minimal stylisation of the word BAREFOOT, and the foot graphic was no more than “an illustration of the word”. The monopoly afforded by registration of the word BAREFOOT was considered broad enough to “include the word together with a device which does not substantially affect the identity of the trade mark in the word alone”.

Whether a representation of a registered word trade mark will be considered use of that trade mark is a matter to be determined by reference to the facts of each case. The lesson from this case is that a representation of a registered trade mark which contains amendments to its appearance which substantially alter that trade mark’s appearance or meaning from the version filed, may not be considered use of the registered trade mark.

In light of this, it is important to be aware of the threat posed by non-use proceedings in the case where a trade mark is used in a variety of ways in stylised fonts, alongside graphics or with a combination of these elements.

Tips for brand owners

Brand owners often use a combination of words, logos and other devices to indicate their brand. The lesson from the High Court is that, while it is fine to use a combination of such words and logos, you must ensure that the way in which you use your trade mark reflects the way in which the marks have been registered.

It is therefore important to consider whether you have registered all relevant components of your brand indicia, both in combination and as separate elements depending on how you make use of these marks.

Brand owners should regularly monitor the ways in which their registered trade marks are being used in promotional, marketing and branding materials, particularly when a trade mark has been used for a long period of time.

If your marks are used in practice with changes or additions to the trade mark as filed, you must ensure that any such changes are not so substantive as to change the character of the trade mark or to substantially alter the appearance or impression of the trade mark from its filed form. If a brand owner wishes to rely on a particular form of the trade mark displayed (for example) in combination with a graphic as a key component of the brand, it will be worth filing this format as a new trade mark application.

To ensure registered trade marks do not become vulnerable to attack on the basis of non-use, keep in mind the following:

Continue to use registered trade marks in a manner consistent with the version as registered;

Educate marketing personnel as to the possible implications of incorrect use of the trade mark;

Remind marketing personnel of the need to communicate significant changes in branding to relevant people (whether

legal, management or external legal advisers) in your business;

If a registered trade mark is used in conjunction with other elements, ensure that the registered trade mark is still used by itself so that it will be objectively viewed as being used as a “stand alone” mark and apply for new registrations for any significant alterations to the way the mark is used;

Discuss new branding strategies with your legal advisers to ensure that you are using your trade marks effectively, accurately and consistently, and to ensure your trade mark portfolio is adequately protected.

Lisa Egan is a senior associate at Middletons law firm.


TCF Helpline

Each edition, industry organisation TCF Australia (www.tcfaustralia.com) answers your questions. Buyers, designers and industry stakeholders can submit questions to ragtrader@yaffa.com.au.  

Q.I am participating in my first trade exhibition and I don’t know what I should prepare for and how many orders I can take. Is there a checklist? (BC, Victoria)

A.In the rush sometimes the basics are overlooked, here is a quick checklist:

Pricing & Costing – prepare early, code and price all swing tickets or labels

Marketing & Promotional material – business cards, brochures, look book, media file, signage, velcro, scissors, swatch books, wear your own label on stand

Stand Theme & Logistics - decor, mannequins, racks, hangers, displays Business requirements - order forms, new account/credit application forms, note pad, pens, calculator, stapler, insurance re public liability & sample coverage

Staffing & Customer Service – be courteous, know your product and smile!

Order volumes - know your supply capacity, timelines, production schedules & cash flow you can finance and/or the credit terms you are able to offer

Enquiry Contact details – record all enquiries you receive and follow up as orders can be placed after the event and good luck!

Q. How do I work out what price to charge for my goods or services? (GC, NSW)

A.There are a number of different ways to price a product or service. One method is market pricing, where a percentage is added to the cost of the product.

Target pricing is where the price is set at a level that will give you the required rate of return on its total investment.

Then you can base the price on what others in the industry are charging.  NB: You must have a accurate calculations of all your product costs and business operating costs (fixed and variable) to make accurate decisions on your pricing formula.