Losing Your Rights In A Trademark

Gokcen Uzer Cengelci / Lisa Wright,

Did you know that, according to the World International Property Organization (WIPO), there were an estimated 10.9 million trademark applications filed worldwide in 2018? This denotes a growth of some 19% since the previous year and marks the 9th consecutive year of growth!

Trademarks have very much become a part of our everyday lives and their use dates back thousands of years. The very first trademarks were said to be the branding of livestock as depicted in cave paintings from the Stone Age. They were used to identify personal property to prevent theft. The role of trademarks has evolved over time and the first modern trademark laws, which legally recognized trademarks as a form of intellectual property, were passed in the late nineteenth century. Today, trademarks are still used to brand goods and services as “brand names” and they enable consumers to recognize the origin of the goods and services that they represent.

Trademark protection

Trademarks and service marks are protected by law in order to be able to serve their source-indicating function. They denote a certain level of quality and help to prevent consumers from being misled or confused about the origin of the goods or services. 

By trademarking your goods or services you also help to ensure that you (as the trademark owner), are protecting your investment - in terms of the time and money you have spent - in developing, producing, marketing and selling your products or services. Trademarks help to assure that you (and not a third party imitator or competitor) will get any hard-earned profits.

Establishing rights in a trademark

Depending on the country, trademark rights are usually established either through registration or use. In some countries (including those with legal systems based on common law, such as Australia, Canada, the United Kingdom and the United States) using a trademark can establish common law rights on that sign.  

Although trademark protection can last forever if maintained properly, owners can lose their rights to a mark if they don’t take proper care of it. There are several ways in which you can lose your rights in a trademark. And, one of the most common ways to lose a trademark is by not using it properly. In other words, the use of the mark should be consistent in terms of its registration and it should always be able to keep the power of its source indicator role.

My use is not overlapping with my registration, am I in trouble?

The short answer is probably! We all know that trademark forms can keep changing - in a way they can evolve - over the years. One of the best known examples of a trademark evolving over time is COCA-COLA, when looking back over the last one hundred years of history. The iconic COCA-COLA logo’s iterations were immediately recognizable by each consumer of their time. The history of the COCA-COLA logo can also be seen in the company's portfolio as it has filed applications all around the world for each new logo form. 

The Audi logo is another example of the evolution of an iconic logo and you can read more about how their automotive logo has literally moved with the times in our blog written by guest author, Tulika Rastogi!  

It is therefore of paramount importance to keep both the use and the registration form of a trademark within the same parameters. To prevent any non-use claims by third parties and to claim genuine use of a trademark, the applicant should prove the use of the trademark in the form in which it is registered. In other words the use and the registration form should overlap. 

In most countries this is regulated by giving some kind of wriggle room to the applicants to make small changes - namely changes which do not alter the distinctive character of the mark. In other words, if the change made during the use is so small that the consumer still relates the registered trademark and the use of the amended trademark as the same source, the use is accepted as proper or genuine.

One small change can be a big deal

So what constitutes a small change in this regard? What change does not alter the distinctive character of the trademark? This is the current regulation in the EU harmonized regulations, for example, so those are the two key questions for the EU territory and the issue is mostly evaluated on case merits (depending on the facts of the case). Moreover, the decision as to whether the use of a variation of a mark alters its distinctive character is heavily affected by both the practices in the branch of business or trade concerned and also the relevant public.

It is also important to check whether there is any room for small changes allowed in the territory in which the trademark application is filed. In any event the safest way is to file an application in exactly the same form of the use intention/current use.

Am I using my trademark properly?

A trademark should never be used as a noun to identify goods and services. In other words, you never drink “Lavazza” but you do drink “coffee” (super creamy coffee actually!) Using your trademark properly will diminish the risk of it becoming generic, which is an absolute nightmare for any company. Thus, keeping a sign’s power as source indicator is of utmost important for the future of any trademark. 

It is also important to monitor the references that are made by your competitors and consumers to your trademark. It has often been seen that consumers may also use the trademark improperly - albeit inadvertently. This kind of mark misuse by others can lead to the trademark ceasing to indicate the source of goods or services and becoming a product name in everyday language - otherwise known as genericness

Get informed and find out how to help your trademark to avoid the nightmare of genericness! Listen to the latest episode of Talkin’ Marks our new legal podcast: “Genericness Unpacked.”


Ugg decision

“Elevator” and “corn flakes” are examples of brands that have fallen victim to genericness in some jurisdictions. Jurisdiction based evaluation is key here. The latest “UGG” decision from the US clearly attests this point. Accordingly, the validity of UGG trademarks are challenged on the grounds that the trademark is generic in Australia.  However in their evaluation the US court rejected using the perceptions of Australian consumers (and that the UGG brand was generic there) and decided the case based on the trademark’s distinctiveness in the US. 

It has been decided that ‘ [The defendants have] evidence that ugg is generic in Australia, but there is no evidence that Americans familiar with Australian usage (or Australian visitors to the United States) would be misled into thinking that there is only one brand of ugg-style sheepskin boots available in this country in the latest decision Deckers Outdoor Corp. v. Australian Leather Pty. Ltd., 340 F. Supp. 3d 706. 

The jury awarded USD$450,000 in damages, finding Australian Leather infringed Decker’s trademark.

So long story short, always monitor the use of your trademark and never ever create a use which does not indicate the source or fail to prevent ‘a failure of function’ of your trademark!

TrademarkNow pro tip

Most countries enable showing the status of a registered trademark by using the ® symbol with the mark. In those countries it would be useful for trademark applicants to show that their trademark is under protection and identify the status as such by always using the ® symbol!

Police your trademark all year round

Our new pay-per-watch trademark monitoring solution, Word Watch, allows you to watch your mark in a number of different territories of your choice for a whole year. 

Word Watch monitors your trademarks and slogans and alerts you to any applications for potentially conflicting marks. You therefore minimize the risk of missing potential trademark infringements and save time by getting relevant watch alerts only!

You get:

  • Trademark details (translations included)
  • Trademark owner details (including information about how aggressive they are in their brand protection)
  • Opposition periods and much more!

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By Gokcen Uzer Cengelci / Lisa Wright
Gokcen Uzer Cengelci, Trademark Counsel at TrademarkNow, worked as a trademark attorney for over 12 years in top-tier trademark law firms where she specialized in opposition procedures and trademark portfolio management strategies. She regularly publishes articles on trademark law and has a deep interest in the role of legal tech in IP. Lisa Wright, Content Writer at TrademarkNow is a graduate of the University of Law. She researches and publishes books, articles, and webinars on global IP law and trademark activity.