You’ve taken the important step of registering your trade mark – a crucial move in protecting your brand and intellectual property. But did you know that simply registering a trade mark isn’t the end of the story? Owning a trade mark means more than just having your brand on a certificate – it needs to be actively used and maintained, or you could face serious consequences down the line.
The Red Bull vs. WAR WINGS Case: A Lesson in Use
A recent UK Intellectual Property Office (UKIPO) decision reminds us about the importance of using your trade mark in the exact form it was registered. In this case, Red Bull, known for its slogan “GIVES YOU WINGS,” tried to invalidate a UK trade mark for “WAR WINGS,” owned by Ahura Middle East General Trading, claiming it could confuse customers and damage Red Bull’s reputation.
But there was a twist. While Red Bull provided evidence of using a similar slogan – “RED BULL GIVES YOU WIIINGS” – they didn’t show use of the exact phrase “GIVES YOU WINGS” on its own. The Hearing Officer ruled that the misspelled “WIIINGS” altered the distinctive character of the trade mark, and the case collapsed.
The Pitfalls of Not Using Your Trade Mark Correctly
What’s the takeaway? First, your trade mark needs to be used in the form that it’s registered. Even minor deviations, such as an extra letter, can cause problems. If you don’t consistently use your trade mark as registered, you may find it difficult to enforce your rights or even risk having it invalidated.
Here’s something to think about: Could you be unintentionally weakening your trade mark rights by not using your mark as it was originally filed?
Trade Marks: Use Them or Lose Them
It’s essential to understand that a trade mark isn’t just a passive asset. In the UK and EU, if you don’t use your mark for a continuous period of five years, it could be revoked. This opens the door for third parties to claim it for themselves. So, if you’ve registered a trade mark but aren’t actively using it, you might be sitting on a ticking time bomb.
There is a case of Ansul BV v Ajax Brandbeveiliging BV, where the court ruled that trade mark use must be more than just symbolic. In this case, Ansul had stopped producing fire extinguishers under its registered trade mark “MINIMAX,” leading to the mark being challenged. The court decided that merely maintaining the brand through servicing old products wasn’t enough to satisfy the requirement of ‘genuine use.’
What Constitutes ‘Genuine Use’?
It’s not enough to put your trade mark on anything and call it a day. Your trade mark needs to be used in a way that reflects real, commercial activity. The use has to show that your brand is actively trading in the market and contributing to your business. Simply keeping a trade mark on paper isn’t sufficient.
This means that if you’re not selling products or offering services under your trade mark, you’re leaving yourself vulnerable to legal challenges. Ask yourself: Are you using your trade mark in a way that proves it’s a living, breathing part of your business?
Avoiding Trade Mark Revocation
If you’re not using your trade mark consistently, what can you do to protect it? First, make sure your trade mark is used in connection with the goods or services it was registered for. If there’s a period when you’re unable to use it due to extraordinary circumstances – like natural disasters or severe market disruptions – you may be able to defend your position by providing strong evidence of these obstacles. However, it’s important to note that these cases are rare, and you must show that you genuinely intended to use the mark.
Next Steps: Keep Your Trade Mark Safe
Protecting your trade mark is an ongoing responsibility. Here are some key steps you can take:
- Use your trade mark consistently in the form it was registered.
- Keep records of how your trade mark is being used in your business.
- Regularly review your trade marks to ensure they are still relevant to the products or services you’re offering.
- Consult with intellectual property specialists if you’re unsure about whether your trade mark is being used correctly or at risk of revocation.
At National Business Register, we help businesses protect their valuable intellectual property and avoid the pitfalls of non-use. Whether you’re looking to register a trade mark, ensure it’s being used correctly, or defend it against challenges, we’re here to guide you every step of the way.
Have questions about your trade mark? Get in touch with us today to ensure your brand remains safe and protected by calling 0800 069 9090 or emailing us at Info@nbrg.co.uk.
