19 September 2011

You’ve chosen a catchy brand name, recognised the importance of registering it as a trademark, gone through the application process, now you can sit back, relax and plan your future marketing strategy, safe in the knowledge that for the next 10 years your trademark is protected – but is it?

Revoking a trademark

Registering a trademark gives you the right to the exclusive use of that mark to promote the goods and services under which it was registered. Registration lasts for 10 years, and can be renewed thereafter indefinitely. However, the act of registration is only a part of the process necessary to ensure your trademark is properly protected. Under EU and UK trademark law, if your trademark has not been put to “genuine use” in relation to the goods or services for which it is registered within a period of 5 years after registration, it is possible that a competitor can apply to have your trademark revoked.

What is “genuine use” of a trademark?

In 2005, the European Court of Justice (ECJ) set out guidelines indicating that “genuine use” of a trademark must amount to “actual use of the mark” and should not merely be a token intended solely to preserve the mark. This would exclude using trademarks, for instance, only internally, within the company, and would require that at the very least preparations were under way to exploit the trademark commercially so that the mark would come to the attention of end users.

What if a trademark is registered for goods used only as promotional ‘freebies’?

In 2009 the court considered the situation where a trademark was registered to promote non-alcoholic drinks that were to be given away for free. The drinks were to be used as part of a promotion to encourage customers to buy clothing. The court held that this did not meet the threshold, since “genuine use” requires that a trademark must have the aim of maintaining the market for which it is registered.

What if a trademark is only used in a domain name?

The Düsseldorf High Court recently considered this situation in the on-going dispute between The Zappa Family Trust (headed by Frank Zappa’s widow) and the organisers of Zappanale – a festival thrown annually by fans of the late singer. The Trust, which owns the Community trademark, ZAPPA, has been trying to ban the festival on the grounds that advertising and merchandising for the event amount to trademark infringement. Fans have hit back claiming that the trademark should be revoked on the grounds that the only use made of the trademark was in a domain name. While the court noted that, in theory this might constitute “genuine use”, it was held that since the trademark was also the name of the legendary performer, the public seeing the text in the URL would not recognise it as a functioning trademark. The ruling, which reversed the decision of the regional court and will itself be subject to appeal, highlights the risks of relying on a URL to prove “genuine use”.  It also indicates the dangers of using a well-known celebrity name as a trademark.  

How do I ensure my trademark will not be revoked?

Read together, the cases suggest that the best way to ensure your registered trademark will not be subjected to an attack, is to choose a distinctive mark that does not hold any competing meaning for the public, and to engage in actual economic exploitation of the mark for all of the goods and services registered, in a way that is clearly understood and recognised by the public.

Further Reading:

Ansul BV v Ajax Brandbeveiliging BV [2005] Ch 97

http://www.ipo.gov.uk/ipcass/ipcass-alphabetical/ipcass-alphabetical-a/ipcass-ansul.htm

Siberquelle GmbH v Maselli Strickmode GmbH [2009]

http://www.intellectualpropertyineurope.com/node/57

by Katey Dixon