Think that having a trademark registration makes it impenetrable to attack? Think again. A trademark registration will be vulnerable to attack if it is not being used properly. In these cases, simply renewing a trademark each 10 years will not provide indefinite protection on its own. There must be use of the mark in the relevant sense to maintain the right to a trademark registration.
Recently, the brand “Morgan Grenfell” came under attack, when a former employee of the London-based investment bank registered the name as a new company name at the UK equivalent of ASIC. The trademark is currently registered to Deutsche Bank, which acquired Morgan Grenfell in 1990, however the brand name is no longer used, and appears to have not been used for some time. The former employee seems to have targeted this name for being famous once upon a time, knowing that it hadn’t been used for a number of years. Indeed, there appears to be somewhat of a growing trend of new entrepreneurs grabbing unused trademarks…. So beware!
In Australia, if a trademark is not used for a continuous period of 3 years, the ownership of the mark is vulnerable to attack. So if you’ve got a registered trademark, make sure that you’re continuing to use your mark in trade. Instances we see quite regularly involved trademark registrations for logos that then change over time – so be especially careful if your trademark registration is for a logo that has or might change.
If you would like advice about registering your trademark or otherwise protecting your marketing spend, or if you are worried about whether you have the best protection for your marks, send us an email enquiry to [email protected] and we will organise a time to talk with you about your mark and to answer any questions you might have. We also provide a number of free information resources, so just drop us a line and we would be more than happy to send them through to you.
Disclaimer: The material contained on this website is provided for general information purposes only and does not constitute legal advice. You should not depend upon any information appearing on this website without seeking legal advice. We do not guarantee that the contents of this website will be accurate, complete or up-to-date.