Loss highlights ‘use it or lose it’ rule for trademarks

Zone IP (The Zone Corporation)

1 July 2013

Release of Georgie Pies and Unilever’s loss highlights ‘use it or lose it’ rule for trademarks

The recent release of iconic Georgie Pie pies by McDonalds, and a trade mark defeat for Unilever in the New Zealand High Court, both highlight the need for businesses to ‘use it or lose it’ when it comes to trade mark protection.

Intellectual property expert and lawyer, Theodore Doucas of Zone Law and Zone IP, an intellectual property law firm and consultancy in Wellington, said that whether by design or accident, the release of George Pies by McDonalds will help the restaurant chain hold on to its ‘Georgie Pie’ trade mark.

“Companies need to be aware that if they are not using a trade mark, they can lose it. Over the years there have been instances where various interests have tried to use the Georgie Pie trade mark.

“I’m not saying McDonalds released the pie simply as a trade mark exercise, but it certainly helps. George Pie has a lot of pulling power as a brand, and McDonalds won’t want to lose it.”

Mr Doucas also pointed to the recent failure by Unilever to protect its “Catwalk” trade mark in the High Court as a highly relevant example of how a company can “lose” an unregistered trade mark through lack of perceived use or profile.

ASX-listed McPherson's Consumer Products applied to register “Catwalk” in 2010 for a range of products such as decorative headbands. Unilever, who did not have a trade mark registration for the mark, opposed the application on the basis of prior use because it markets haircare products like waxes and shampoos, under the same trade name.

Unilever asserted that the use of the “Catwalk” brand name would cause confusion, but the Assistant Commissioner of Trade Marks ruled that the corporate giant had failed to establish an awareness of its trade mark in New Zealand. Unilever appealed, but the High Court agreed with the Assistant Commissioner’s findings.

“It is important that companies remember to both register and use their trademarks. Just registering your trade mark is not enough, because if you don't use the trademark within three years it is open to revocation.

“It really is a case of use it, or lose it. One way to do that is to emulate McDonalds and put the trade mark protected product or service out for a limited release, and repeat every three or four years.

“Just using your trade mark and relying on common law rights is also clearly not enough.”

Mr Doucas said that the case emphasised the need to actively market and build a profile for your brands, especially if they are not registered.

“Taking and asserting ownership of a trade mark is as much about legal registration as it is about taking ownership of profile and perception within a chosen market,” he said.

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