Trademark Registration – A Lack of Finality?
Over half a million trademark applications are filed each year throughout Europe, and a memo of the European Commission indicates that as of March 2013 there were nearly 10 million trademarks listed in European registers. Putting it mildly, the Commission notes that “The demand for trade mark protection is high”. But if you consider the essential purpose of trademarks, a problem starts to emerge.
Are the Trademark Registers too Crowded?
At their most basic, trademarks are a way for consumers to tell the goods and services of one business apart from those of another. In principle, trade mark rights can also last indefinitely. So, if the number of trade marks registered continues to grow in this fashion, with every combination, and every permutation being snapped up, surely businesses will run out of words to use? Some people worry that it is already difficult to find a good .com domain name, but what would be the impact if you faced an uphill struggle when looking for a brand name you could use in general? What if all possible brand names were taken, what would you call your new business, or products?
Fortunately, even if the rate at which trademarks are applied for is set to increase significantly, this scenario is far from becoming a reality. First of all, just to cover all possible combinations of letters and numbers with marks only as long as the word ADIDAS would mean every single human being on the planet registering at least 10 trade marks, and that doesn’t take into account stylised text, logos, sounds, colours, shapes or other types of trademark. Of course, the scope of protection extends further than basic identity – the use of a similar word can constitute infringement of a registered trademark, so not every combination of characters need be registered before it becomes difficult to conceive something novel. However, this becomes even less of a problem once you account for the fact that the same trademark can be registered by different owners who are not competitors, but even so, the cluttering of the trademark registers is undoubtedly a valid concern.
Trademark Revocation
That’s why the role of trademark revocation is important. Trademark registrations are not immortal, and although it’s feasible to maintain them indefinitely provided that renewal fees are paid promptly, there are a number of grounds on which a registration might be challenged. One of the fundamental grounds on which you might apply for revocation of a registered trademark is that it isn’t being used. Richard Arnold QC put it like this:
“The purpose of revocation is to remove trade marks or parts of the specifications of trade marks where there has not been use. It is there to serve a purpose in trade; it is the Lipitor that stops the arteries of commerce being blocked with the cholesterol of unused trade marks”
Broadly speaking, if a trademark is left languishing for a continuous period of 5 years, it is vulnerable to revocation. So, out with the old (owner) and in with the new. But this is far from the only reason a trademark might be struck from the registers.
As discussed above, the purpose of a trade mark is to help consumers distinguish the goods and services of one undertaking from those of another, and once a word becomes the common name for something, it can lose this ability to designate origin. This process is referred to by trade mark professionals as genericide – once a trade mark becomes generic it loses its distinctive character. Some common examples of genericide are Hoover and Escalator – both of which are brand names which have become accepted into general language. Once this happens, trademark registrations are on shaky ground.
Although far less common, another basis for revocation of a registered trademark is the argument that it is likely to mislead the public, for example if the trademark suggests that products have a particular geographical origin, or a particular quality when in fact they do not.
Invalidation
Aside from revocation, registrations can also be declared invalid. Whereas the impact of revocation is that the mark is removed from the registers, if a trademark is declared invalid it is treated as never having been registered at all. Trademark applications occasionally slip through the net, and so a registration might be invalidated if later on, it is discovered that a similar or identical trademark was already registered by someone else, or because another business had built up rights in a conflicting trademark by using it. Alternatively, having been reassessed the trademark could be deemed descriptive in retrospect, and therefore lacking the ability to distinguish the origin of goods and service.
Should I still try to Register my Trademark?
So, registration is feasibly indefinite, but there are no guarantees as it suffers from a lack of finality. Does this mean it isn’t worth registering? Absolutely not. The key message here is that there is far more to registering a trademark than simply making it onto the registers. All of the risks mentioned above can be managed by taking care at the outset. By casting a critical eye over your trademark before applying for registration, an expert will be able to assess whether it might later be deemed descriptive, or deceptive, and a professional search will reduce the chances of conflicting rights turning up out of the blue later on. They will also be able to advise you of ways to maintain your registration, for example by using the registered trademark symbol you may be able to avoid genericide, alerting people to the fact that the mark isn’t simply a common word but an indication that you are the source of the product.
To help avoid losing your rights you should also take care to make genuine use of your trademark. The concept of genuine use is complex, and you might be surprised by some of the situations which don’t meet this test. For example, a manufacturer promoted its clothes by giving away drinks labelled with its brand, and because the freebies were not distributed with the aim of penetrating the drinks market, it was not sufficient to maintain rights over the brand in that class of goods. On a related note, it’s important that you take care to use the mark in the way it is registered, and if you do make a change, for example by altering the design of your logo, you should consider whether it’s necessary to file a fresh application for the variation.
