Suppose you registered a trade mark for your business several years ago. However, your business has now evolved and you no longer use the registered mark. In that case, you might wonder whether you should keep a mark you do not use. This article will take you through some key considerations when deciding if you should maintain a trade mark you do not use.
What is a Trade Mark?
Registering a trade mark is one way to protect and maintain your intellectual property (IP) rights. A trade mark gives you the exclusive right to use and commercialise your brand asset. Having exclusive rights to your trade mark means you can prevent others from using it without your permission. This is referred to as trade mark enforcement.
Trade marks can take a variety of forms. For example, the most common trade marks for businesses are for business:
- names;
- slogans; and
- logos.
There is no formal requirement to register your trade mark for you to use it. However, registration makes enforcing your trade mark rights easier by serving as formal evidence of your ownership. As such, it is highly recommended that you register your mark with the relevant trade mark office. In New Zealand, the Intellectual Property Office of New Zealand (IPONZ) oversees all forms of IP registration.
Do I Have to Use My Trade Mark?
The IPONZ requires you to use your trade mark to maintain its registration. Failure to use it means it is at risk of being removed from the trade mark register on the grounds of non-use. This aims to deter people from hoarding trade marks they do not use.
Your trade mark becomes vulnerable to revocation on the grounds of non-use if you do not use it within a continuous three-year period. This three-year period commences following the actual date of registration of the trade mark. For example, if you registered your mark 10 years ago but have not used it in the past three years, the IPONZ is more likely to remove it.
It is important to note that removal for non-use is not an automatic process. Instead, a third party must apply to remove a mark from the trade mark register.
Our free Trade Mark Essentials in New Zealand guide explains how to register and defend your trade mark registration.
What is ‘Use’ of a Trade Mark?
The ‘use’ of a trade mark will differ for each business. For example, some trade mark owners might be actively using their mark as part of their business operations. This might include printing their logo on marketing materials. However, trade mark use is defined much more broadly than this.
If you have authorised another party to use your trade mark, the law may consider this continued use. This means that even if your business is not using the mark, it can still exercise control over it and meet this definition.
For example, you have the exclusive right to commercialise your mark. As a trade mark owner, this includes a licensing agreement. Trade mark licensing is the process of permitting a third party to use your mark within certain parameters. This is common for franchises, where franchisees pay royalties for an ongoing licence to the use of a franchisor’s IP. A licensing agreement shows ongoing ‘use’ of your mark without the actual registered owner using it.
Should I Keep My Unused Mark?
The purpose of a trade mark is to protect your brand assets. The ability to have your mark removed for non-use indicates that extended non-use of a mark goes against the fundamental purpose of a trade mark registration. As such, you may not wish to keep your mark if you do not intend to use it.
A further consideration to be had is the trade mark renewal process. Registered marks must be renewed every 10 years. This process also requires you to pay renewal fees. You may find the renewal expense unnecessary if you do not use your mark or if your registered mark does not add any value.
Key Takeaways
The purpose of a trade mark is to give you the exclusive right to use and commercialise your mark. As such, the non-use of a mark may allow third parties to challenge it. If you are debating whether to keep a mark you do not currently use, you should carefully consider:
- that your trade mark will become vulnerable to removal for non-use;
- the costs incurred from trade mark renewals and other ongoing maintenance;
- whether you intend to use your mark in the future; and
- whether your mark can be utilised in alternative ways, such as in a licensing agreement.
If you need assistance deciding if you should keep your New Zealand trade mark, our experienced trade mark lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 0800 005 570 or visit our membership page.
Frequently Asked Questions
If you do not use your registered trade mark within a continuous three-year period, then your trade mark becomes vulnerable to revocation on the grounds of non-use. This three-year period commences following the actual registration date of the trade mark.
You must use your trade mark to be able to keep it. This might include using your mark on marketing materials or having a licensing agreement with a third party. If you do not currently use your mark or intend to use it, you should consider the costs incurred from trade mark renewals and other ongoing maintenance.
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