A trade mark is one of your business’s most valuable assets. It is a representation of your brand and can be bought, sold or licensed, just like a physical asset. Just as other business assets need to be maintained, your intellectual property portfolio should also be the subject of regular reviews to ensure that the protection you have covers your present and future activities.
In the case of trade marks, it is important to regularly review existing trade mark registrations to ensure that they continue to adequately cover the goods and services in relation to which a mark is being used. For example, a business might have a well- known brand with an associated trade mark registration dating back over 30 years, but if the goods or services specified in the old registration are quite narrow, it might not prevent similar marks from being accepted onto the Register in respect of related areas of commerce. If the owner of the old registration decides to apply to register a modified or updated version of their trade mark, possibly for a broader range of goods or services, then the newer marks on the Register could be obstacles to any such new application. In other words, the owner of the old registration could be in a position where it has an old trade mark registration which no longer covers its full range of activities, and may not be able to register a newer modified version of its mark because of intervening registrations by other trade mark owners.
What this hypothetical (but not uncommon) situation highlights is the need for trade mark owners to regularly review the scope of their trade mark protection, particularly where brands and logos, and the goods and/or services in relation to which they are used, are modified over time.
In this example, a review of the organisation’s trade mark registrations at renewal might have resulted in broader applications being filed earlier, avoiding subsequent marks protected by other owners.
We recommend regular reviews of your intellectual property portfolio in the context of your current activities and at the very least, at each renewal of a trade mark registration.