How can I lose my trade mark?

Obtaining registration of your trade mark is a clear milestone of success, but it is not the end of the story.

Even though trade marks can technically last forever (subject to renewal fees payments), there are certain circumstances where you can lose your trade mark rights. In this post, we outline how that can happen.

How can you lose a trade mark?

If you don’t use it

You have to actually use your trade mark in trade to keep your trade mark rights. If you don’t use your mark, a third party could apply to the relevant intellectual property office to cancel it for non-use.

There is a ‘grace period’ after registration when you can start using your mark, and usually, it is three or five years after the initial registration depending on the jurisdiction (it is five years in the UK, for example). If you have not commenced use of your mark within this time frame, or if you stopped using your mark for the same period of time, there is a risk your mark can be cancelled.

Tips

• Keep using your mark in trade mark in trade in relation to goods/services it is registered for and in the territory it is registered in;
• Collect evidence of the same from day one, which includes photographs of any packaging, advertising, marketing materials, press coverage, website screenshots, or invoices.

If you let it become generic

If a mark becomes generic, it can no longer function as a trade mark and becomes vulnerable to cancellation. For example, ‘escalator’, ‘linoleum’, and ‘cellophane’ were all registered trade marks before they became too generic and could no longer identify the origin of goods in question.

Tips

• Do not use the mark as a verb (e.g., ‘to Hoover the floor’);
• Do not use the mark as a noun (e.g., ‘a Band-Aid’);
• Do use the mark as an adjective (e.g., ‘a Band-Aid bandage’);
• Police and take action against infringement of your mark

If you forget to renew it

If you don’t renew your mark, it will lapse irreversibly. Therefore, it is crucial to remember to renew your mark in time by paying renewal fees. In the UK, the renewal is due on the 10^th anniversary of the mark’s filing date.

Summary

These are just a few examples of the circumstances where the trade mark could be lost. If you are concerned about losing your registered trade mark rights and would like some specialist advice, please drop us an email or give us a call and we will be happy to arrange a free consultation with one of our lawyers.