Trade mark owners often believe that by having registered rights, they have done all that is necessary to protect their intangible assets.
While obtaining trade mark registrations is a great start towards securing your rights, a trade mark audit will help maximise and keep your trade marks ‘healthy’.
What is a trade mark audit?
A trade mark audit is basically a detailed review of your trade marks - including any new brands, new uses, current applications and use of existing registrations.
This exercise will allow you identify which assets you have as well as any gaps in protection.
A trade mark audit should be conducted on a regular basis: once or twice every calendar year for all trade mark owners.
Top 5 reasons to TM Audit
Following are a number of key reasons to conduct Trade Mark Audits:
1) Identifying new trade marks
Questions to consider here include:
- Have you been using a new slogan?
- Did you update your logo?
- Are you re-branding?
A trade mark audit will allow you to identify any new trade marks that may need protection. Also, clearance searches should be conducted to identify any possible issues/risks associated with the new trade marks you are considering.
2) Identifying ‘gaps’ in your trade mark portfolio
A trade mark audit will also help you discover whether there are any vulnerabilities in your existing trade mark portfolio.
These may include a lack of use of your trade marks, changes made to existing registered trade marks, a lack of trade mark protection in jurisdictions of interest or incomplete protection in terms of class coverage for your existing trade marks.
All of the above are serious issues that, if dealt with in time, could save you time, expenses and legal problems down the track.
3) Identifying your trade mark notice use
The trade mark audit can also determine whether the proper trade mark notices, i.e., ‘TM’ for pending marks and ® for registered marks, have been applied to your trade marks (eg, product packaging, websites, marketing material).
Attaching the appropriate symbol to your trade marks will help in preventing a trade mark from becoming generic and will also help prevent others from adopting and using a similar trade mark.
4) Identifying ownership discrepancies
When a trade mark is filed, the ownership details for that mark are recorded as relevant at that point in time.
However, it is very common for trade marks to be assigned to a third party or for a company to have a merger, change of name or address.
A trade mark audit will assist you in identifying if there are any ownership issues in your portfolio. It is very important that the trade mark ownership details as recorded are correct and updated.
5) Identifying any licensing issues
It is not uncommon for trade mark owners to license the use of their trade mark to third parties.
A trade mark audit is a great time to also review your licensing agreements and your trade mark policies in order to maximize royalty payments/ monetary gain and minimize misuse/ infringing uses of your trade marks.
Time to audit
You may never have performed an audit of your trade marks or it may have been a long time since your last audit.
In order to keep a healthy portfolio, think about auditing your trade marks this year. There are many reasons to do it but the most important one is:
Your trade marks may well be your most valuable asset: Why not maximize their value?