Is it time to ‘audit’ your trademarks?

Trademark registrations should not be viewed as ‘set and forget’ assets – rather, they should be seen as the start of an ongoing process of monitoring and preservation. To achieve this, a business should conduct a regular ‘audit’ of its trademarks and other trade indicia.

Many multinational brand owners conduct such audits on a regular basis, and it’s important that startups and SMEs adopt this practice as part of their broader IP strategy. New SMEs who have developed and grown their trademark portfolio rapidly should ‘pencil-in’ a reminder to conduct an audit after a few years of trading.

Author and experienced trademarks advisor Chris Sgourakis provides a checklist below for businesses looking to initiate the audit process. The answers to these questions can be conveyed to your business’ trademarks advisor to inform your trademarks strategy.

Is a trademark being used for any new product category, that is not covered by the goods and services in the original trademark registration?

If yes, consider re-registering the mark for the new product category.

Is the business using any new trademarks not covered by the existing trademark registrations?

If yes, consider registering the new marks.

Is the business using the trademark in a different form to that in the original registration?

For example, has there been a modification in its style or design, or is it now used with additional words or letters? If yes, consider whether any of the variants should be registered

If yes to any of the above, were these changes cleared at the time?

Is there an internal policy in place for clearing and registering new marks and new product categories? Do all relevant staff in the business know about the policy? Consider re-communicating the policy to staff and to highlight its importance.

Can any trademark registrations be allowed to lapse, and not be renewed?

For example, have any marks been abandoned with no prospect of their future use, and will certain marks never be used in a specific country? Significant ongoing cost savings can be made by ‘culling’ abandoned marks.

Has a registered trademark been used within 3 years of its registration?

If not, the registration may be vulnerable to cancellation for non-use by a third party. If there has been no use, steps should be taken to commence use as soon as possible. If the mark has been used, have good records been kept of its use, in case the business needs to prove use to defend a non-use cancellation action

If the business operates through a group of companies, is the company that is using the trademark the same company that is the registered owner of it?

A mismatch between the user of the mark versus its registered owner may make the registration vulnerable to cancellation. Consider whether a license agreement is necessary between group companies, to ensure that the mark is being used under the control of the registered owner. If an inter-group license is in place, are the parties documenting the steps they are taking to monitor and approve the quality of the goods bearing the mark?

Has the business bought or sold any marks?

If so, ensure that the assignments and ownership changes are recorded on the trademark registers. Also, has the registered owner changed its name and/or address, from that shown in the original registration? If so, these changes should be recorded.

Chris Sgourakis was a former principal at Griffith Hack and special counsel at Pizzeys and is the author of the new book, Australian Trade Mark Practice: Selecting, Registering & Managing Trade Marks, available from LexisNexis at https://store.lexisnexis.com/en-au/products/australian-trade-mark-practice-selecting-registering-and-managing-trade-marks.html

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