In today's ever more competitive retail market, a distinctive brand, get-up or design can help to achieve an edge over the competition. Most retailers think of protecting these intellectual assets, but they don't always think of maintaining their sometimes hard fought protection. However, maintaining this protection is equally as important as registering it. Trade marks and designs need to be renewed after a certain time or the protection they give will fall away.
Failing to renew is not the only peril associated with trade marks. If you fail to make genuine use of your trade mark for a specified time period (in the UK this is five years), you run the risk of having the mark revoked and of losing its valuable protection, as well as possibly upsetting licence arrangements.
It is therefore important not only to diarise renewal dates, but also to carry out regular audits of IP assets to ensure that they are not falling out of use.
The perils of an international portfolio
Luxury brand Burberry have recently felt the impact of non-use rules in China following the Chinese authorities' decision to cancel trade mark protection for their iconic red, black and camel tartan design. According to China's Trademark Office website, the decision came after Burberry had failed to make use of the pattern in China for three years. Unsurprisingly, Burberry have appealed.
If the Chinese decision is upheld, the impact on the Burberry brand is likely to be massive as China, whose thirst for luxury goods has yet to be quenched, is one of Burberry's top markets. Burberry's trade mark registration remains in place for the time being until the Appeal is decided, but they are no doubt busy making back-up plans.
Although in the EU and the US the time period for use of a mark is five years, other countries have different rules. It is therefore imperative for businesses to manage their IP portfolios and to know the time restraints in each country where their rights are registered, not just for paying renewal fees, but also for using their trade marks.
Regular health checks
IP can be a powerful instrument when protected and used correctly. Our advice is to review regularly the rights you hold and the assets you use to ensure that they are maintained properly and, in the case of trade marks, that you are still using them. Monitoring use applies equally to unregistered brands as it does to registered ones. Using a brand and generating goodwill from it gives brand owners rights in many countries. In the UK, this is the right to prevent passing off through confusion caused by the use of an identical or similar brand. The strength of this right, however, depends upon the extent of use of the brand and the goodwill it generates. If it falls into disuse, the goodwill in it will gradually fade. How quickly this happens depends upon the strength and reputation of the particular brand. The key message is therefore use it or lose it.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
