Review and revise your trade mark portfolio – a simple and worthwhile exercise

Are you using your marks?

Firstly, consider your current trade mark portfolio and whether all of the marks registered are still in use. If there are marks that are no longer in use, and not likely to be in use, it may be necessary to decide whether there are any strategic reasons for maintaining the registration and renewing, or whether the mark should be allowed to expire in due course.

Secondly, consider your business and what signs you are using in your business that are likely to be trade marks. For example, are there any valuable sub-brands that you should consider seeking protection for? It is important to review these and consider whether these are marks you wish to seek protection for by way of a trade mark registration. If the mark(s) have not been used or used for a very long time, it is recommended you conduct a clearance search to ensure that the mark is available for use and registration, and importantly, that it is not infringing any third party rights.

If you think about any major brand, each of them has evolved over the years. Not only have there been changes to the house mark, the goods and services offerings have also expanded and diversified. A useful example of this is Apple Inc. and the changes to the Apple device mark over the years.

The goods and services covered by the marks have also evolved over time. Apple Inc. recognised the need to keep its trade mark portfolio current because a registration for a mark which is no longer in use is of limited to no value due to its vulnerability to removal for non-use.

Is the scope of your goods and services offering different

It is important to then turn to what each of those trade mark registrations cover. Are the goods or services that are covered by the trade marks still relevant? If not, what is not covered? A business should then consider whether it is necessary to re-file for a broader or different scope of goods and/or services to ensure it has adequate and appropriate protection for its trade marks. A trade mark covering goods and services which are different to the goods and services being used does not adequately protect you and is difficult to enforce.

Foreign coverage rights

It is a common misconception that trade mark protection is global when in fact, rights are on a country by country/jurisdiction basis. If the trade mark rights cover Australia only, however the business has operations in other countries such as the US, China and the UK for example, then you should seek or think about seeking protection of your trade mark in those countries. This is particularly relevant in countries like China which assess marks on a first-to-file and not first-to-use basis.

Seek assistance

Contact your FB Rice trade mark attorney for a review of your portfolio. We can assist you in identifying any amendments or updates that need to be made in order to maintain the integrity of your trade mark registrations and ensure your business has adequate protection.