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A trade mark is a sign or symbol that represents something unique about your business or brand. As a form of intellectual property, it can have various legal rights associated with it. These can include your exclusive right to use the trade mark for your business and the power to bring infringement claims against other people that copy it. As a result, it can be a valuable business asset that generates income and prevents damage to your business and reputation. However, your business grows and changes. You may find that an old trade mark that you previously registered is no longer core to your branding, is outdated or no longer being used by your business, and is therefore not bringing you the same value once was. You have various options available to you, with the cancellation of your registered trade mark being one of them. Therefore, this article will go through four factors to weigh in before cancelling a registered trade mark.

The Value The Trade Mark Brings to Your Business

A trade mark is something that represents something unique about your business, such as its:

  • business name;
  • logo;
  • product name; or
  • slogan.

A trade mark can be both textual and visual, applying to a range of representations. These can include:

  • words;
  • logos;
  • shapes; 
  • colours;
  • smells; or
  • a combination of these.

Once you have established your trade mark in the market, customers will learn to recognise and remember your business through that mark. It operates as a badge of origin for your goods and services.  It occupies a space that your competitors cannot because you are the only one that can use your trade mark (unless you license it).

When considering whether to cancel your registered trade mark, consider these factors and the benefits that registration brings you. You have various legal rights when you have a registered trade mark, and these can be very powerful. However, if the costs of maintaining a trade mark or its continued existence detract from your business, it may be time to cancel it. 

Once you cancel a specific registered trade mark, you cannot restore it to its previous registered status. You will lose all exclusive registered rights attached to that trade mark and need to apply to register it again if you want to regain registered protection. But, if you are not using the brand associated with that mark, this may not be an issue for you.

You can also cancel parts of your trade mark, meaning that you can remove the classes of goods or services you choose to cancel from your registration.

Fees and Other Costs

When you apply to register a trade mark, you will need to pay an application fee. However, this is not the end of the costs you need to cover when maintaining a trade mark. Every time you renew your trade mark, you need to pay $200 for every class of goods or services covered in your registration. Subsequently, when you own multiple trade marks over multiple classes, this can add up.

You need to renew your registered trade mark every ten years. If you do not renew it, it will be cancelled.

Additionally, if you decide to initiate legal proceedings against someone who has infringed your trade mark registration, there are likely to be legal costs associated with this. Suppose you are no longer committed to a particular trade mark or it is not particularly valuable to your business. In that case, you may no longer have any interest in enforcing it, especially given the costs involved.

Existing Licences

When you licence your registered trade mark to another party, you give them permission to use or commercialise it according to your specifications. In return, they may pay you royalties or fees for this right to use the trade mark. You retain your ownership over your trade mark in this process.

As part of a licence agreement, you (as the trade mark owner) must maintain your trade mark registration. If you have existing licence agreements regarding a trade mark you want to cancel, consider what you would be giving up with your cancellation. In particular, if you receive a regular income from a licensed trade mark, you may be losing a beneficial asset for your business. You will also need to end your contracts with any licensees, which will largely depend on the terms of your licence agreement with them.

Are You Using Your Trade Mark?

When you have a registered trade mark, you need to use it. However, if you do not use your trade mark for a continuous period of three years, you may be at risk of revocation. Revocation refers to a process where someone else can apply to remove your trade mark from the register. Usually, this is because its continued existence is harming their own interests, such as wanting to register a similar trade mark.

To combat such an application, you need to prove that you have been using your trade mark, such as through applying it to your goods and services or referring to it in official correspondence.

If you are not using your trade mark, and you do not intend to in the future, you may decide to cancel the trade mark to enable another party to register it without having to revoke your registration for non-use.

Key Takeaways

Your trade mark is a valuable asset that can generate income and customer interest in your business. However, if you are not using it anymore, or its costs outweigh its values, then it may be time to cancel your registration. If you would like more information or help with cancelling your trade mark, contact LegalVision’s IP lawyers on 0800 005 570 or fill out the form on this page.

Frequently Asked Questions

What is a trade mark?

A trade mark is something that represents a unique part of your business. It can refer to various things, but it is often specific brand items such as your business name or logo. You can formally protect this sign with a trade mark registration.

How can I cancel a trade mark?

Cancelling a trade mark means that you are ending your exclusive right to use and profit from that trade mark as the trade mark owner. You can apply to cancel your trade mark through IPONZ’s online portal.

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