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How to keep your trade mark in great shape

By Sarah Chatterley.

There are a number of things to remember once you have received your trade mark registration certificate:

Evolution – ensure that the trade mark you use is the one you have registered. As your business grows or simply as times and fashions change, you may find that your trade mark “evolves”. It may change style, or spelling or a logo may change colour or be modernised or streamlined. It pays to check with your trade mark attorney that the registration you have taken the time and trouble to obtain still provides full protection for the new version. 

You have five years from the date of registration in which to use the trade mark on all of the goods and/or services of the registration. If you don’t, then after 5 years (or after any continuous 5 year period following registration) it may be possible for a third party to cancel your registration for anything it isn’t used for. This may be particularly useful to competitors who want to take advantage of any delay in using your mark on your full range.

Make sure that you record the renewal date and file the renewal request and fee on or before the actual date it falls due. (The UK system does not allow any “grace period"; Community trade mark registrations must be renewed by the end of the month in which renewal falls).

Make sure that you keep an eye on your market (see our information on “watching services”) and contact any third parties starting to use your mark or applying to register it where you already have rights. We can provide assistance and advice on doing this. This means that you are maintaining the monopoly of your trade mark as an indicator of origin and not allowing it to be diluted by unauthorised users, or damaged by users who provide inferior goods.

 Keep your IP attorney and any IP rights up to date in terms of current ownership and contact address details. This ensures that official communications regarding renewals or possible conflicts will reach you without delay. It also means that you will be able to use your rights quickly against third parties without having to record any changes first (a trade mark registration must stand in the correct name to be used by that person or company against another).

Make sure that any use by third parties is authorised and licensed in writing with terms set out clearly regarding the quality of goods and/or services provided and the format of the trade mark to be used. (See our information on licensing your IP). We can help you draft your license agreement, since each set of circumstances is different.

Record keeping – in addition to keeping your contact details up to date, you should record your advertising spend, your sales and customer details with examples of advertising, all showing the relevant DATES. Please see our information on “record keeping”.

If you have to defend your registration against an attack by a third party on its validity or if you want to use it against someone who has started to encroach on your market, you should be sure that your registration is able to do what you want it to. It can be a mistake to delay dealing with any changes if your market place is growing or evolving as any gaps in your protection may mean that you might not be able to stop someone else using your mark. Similarly, this applies to ensuring that your registration covers all of the goods and services you start to provide as you grow.

This news item may contain information of general interest about current legal issues, but does not contain legal advice.