Do trade marks last forever?

Good question. Most intellectual property rights expire, some quite quickly (such as unregistered designs) and some only after a series of renewals (such as registered designs) but, when all’s said and done, they do disappear eventually. And when they do, the protection they afforded disappears too.

This is deliberate. Take a patent for example (which protects an invention). This can last for up to 20 years, however, if it were to last forever, future innovation would be stifled, and economies would suffer. Conversely if they only lasted for, say, 5 years, inventors wouldn’t have sufficient time to recover their R&D costs and properly monopolize their good work.

However, there is one exception, and that’s trade marks (which protect signifiers of origin such as brand names and logos). In theory trade marks, like diamonds, are forever. They need to be renewed every 10 years but, subject to this, they will remain on the register.

But, and this is a big but, the perpetual protection is still subject to one thing… use. In the UK the relevant “use” period is 5 years, although this does differ elsewhere (for example in China it’s 3 years).

This essentially means that as soon as your trade mark has been registered for more than 5 years it’s vulnerable to a non-use cancellation action from a third party.

Who would do such a thing I hear you ask? Lots of people actually, and particularly those who appear to be infringing your trade mark. Essentially, they have an easy defence to an infringement claim if they can show that your trade mark isn’t actually in use and they successfully remove it from the register.

It’s important to bear in mind that “use” in this in context is interpreted strictly. For example, if you registered a logo some time ago but have now changed or slightly updated your branding (something which most businesses do on a regular basis to keep up with market trends) your old logo, and existing trade mark, will no longer be deemed to be in use. That means that unless you have secured a separate registration for your new logo, or a word mark, you will be left with trade mark protection which is effectively unenforceable.

In fact, use can be even more problematic in circumstances in which you have secured broad protection for a range of goods/services but have only actually sold some of these goods/services. For example, it’s very common for brands in the fashion industry to cover the goods of clothing, footwear and headgear in class 25 but if they have just stuck to shoes, their protection for clothing and headgear could be revoked.

So what to do? Well the main thing is to conduct audits of your intellectual property rights on a regular basis (and at least once a year). Important questions to ask are:

• Which registrations are currently, or are about to be, vulnerable to non-use?
• Do all of the registrations reflect your current branding?
• Are all of your goods/services currently in use?
• Do you have sufficient evidence of your trading activities?
• Do you have any branding or goods/services which aren’t specifically protected?

Luckily Briffa is on hand to assist you with this and we regularly carry out IP audits for our clients. So, if you’ve been affected by any of the issues raised in this article and need someone to talk to, please just get in touch.

Written by Will Miles, Partner