Newsletter – June 2016

In this Newsletter Issue:

• BREXIT – Implications for Your EU Trade Mark
• Not enough use, No registration
• Use it or Lose it

BREXIT – Implications for Your EU Trade Mark

Last week, the United Kingdom voted to leave the European Union setting the UK on a new course internationally.

While a great deal remains unknown at this stage, it is important to note that there will be no immediate impact on the rights of intellectual property owners. EU law continues to apply in the UK, as well as UK laws derived from the EU.  The UK will need to officially notify the EU of its intention to withdraw.

Once the UK formally starts the withdrawal procedure, there will be a two-year period to negotiate the terms of the withdrawal. Therefore, registered intellectual property in the European Union such as trade marks and designs will continue to have effect in the UK for the next couple of years. Moreover, national UK registrations will remain in effect.

While a great deal remains unknown at this stage, there are maters companies should begin to consider. At Zone IP and Zone Law we will continue to keep you updated on any new developments.

Not enough use, No registration

7-Eleven, Inc (7-Eleven) has recently found out the importance of using a mark in the jurisdiction you wish to register the mark. 7-Eleven is a United States convenience store company and has been trading in the United States for over 50 years.

In 2012, 7-Eleven filed a trade mark application for their device mark in New Zealand. The device consists of three horizontal bars coloured orange, green and red without the words “7-Eleven” . The Intellectual Property Office of New Zealand found the 7-Eleven mark lacked distinctive character and refused to accept the mark on this basis.

An objection as to distinctiveness can be overcome where the Applicant can demonstrate the mark has become distinctive through use in the marketplace, so that the average consumer associates the mark solely with the Applicant. Therefore 7-Eleven filed evidence showing use of the mark.

Although they trade in many countries around the world, 7-Eleven did not operate in New Zealand at the time of the filing of the application. Therefore, they sought to rely on their long use overseas and their reputational spill-over including use of the mark in movies and recognition by New Zealanders on holiday overseas.

The Intellectual Property Office of New Zealand did not consider 7-Eleven’s use of the mark to sufficiently demonstrate the mark had become a badge of origin in New Zealand.

7-Eleven appealed the Office’s decision before an Assistant Commissioner, but were not successful.

The Assistant Commissioner agreed with the Office’s decision. She considered the use and registration of the mark in other jurisdictions was not sufficient to establish acquired distinctiveness for the mark in New Zealand. In deciding the mark was not distinctive and had not acquired distinctiveness, the Assistant Commissioner stated that “It may be that over time, whether by use of the relevant mark in New Zealand or other circumstances, 7-Eleven’s mark will acquire the necessary distinctiveness in New Zealand. However, on the evidence before me, I consider that is yet to be the case.”

This decision reinforces that demonstration of use of a mark in New Zealand is paramount to a claim of acquired distinctiveness. Where a mark of low inherent distinctiveness is not used in New Zealand, it is difficult to obtain protection. Although evidence of spill-over may assist a claim of acquired distinctiveness in New Zealand, there must be some use in New Zealand. However, the decision does not rule out the possibility that a mark can become distinctive with minimal use in New Zealand, although strong evidence will be required.

Use it or Lose it

Once you have your trade mark registered, it is not necessarily yours forever. The owner of a trade mark registration must keep using the mark to make sure it remains their property.

In New Zealand, if a mark is not used for a continuous 3-year period, an “aggrieved person” can apply to remove the mark from the register. This can have benefits if you have applied for a trade mark and find there is an existing mark which is blocking the acceptance of your mark. If the mark blocking yours has not been used for more than 3 years, you can apply to have that mark revoked from the Register allowing your mark to proceed to acceptance.

In Australia, a mark can be revoked if it has not been used for a continuous 3-year period, but only after 5 years have passed from the filing of the application.

It is important that companies and business owners remember to both register and use their trademarks. It is also important to both actively market and build a profile for your brands. Just registering your trade mark is not enough.

The bottom line is, if you have taken the time to register your mark, use it!