How to use a trade mark

You filed the application, waited patiently through the opposition period, then waited a little longer for the registration certificate (which is now framed on the office wall) but now what…how should a trade mark be used? Well, glad you asked because here are a few rules to keep in mind:

You should use the trade mark as it appears on the register. After 5 years you may need to prove that you have been using the mark for the rights to remain valid and enforceable. If you make use of a variant of the mark or an abbreviation you could be in trouble in 5 years’ time.

The mark should be distinguished from the text around it, for example “BRIFFA is a trade mark of Briffa Legal Limited”.

What ever you do, don’t use the trade mark as a noun – use it as an adjective instead. We do not want your trade mark to be a replacement name for a product or service as that may lead to it becoming generic and being removed from the register.

The trade mark is there to be a badge of origin, its to distinguish your goods and/or services from those of your competitors. “Escalator” and “Yo-Yo” were once trade marks but through use they became generic and are now used to describe things rather than as a badge of origin. You should have procedures in place where encouragement/guidance is given to other users of the trade mark to use it correctly, for example in brand guidelines or licence agreements.

You should also take action when you see that your trade mark is being used in an infringing manner and/or entities attempt to register identical or similar trade marks to your own.

If you have got a trade mark and would like some guidance on how to use it and what you can do with it, why not contact us for a free consultation to see how we can help.