Managing your trade mark portfolio
Protection and maintenance of trade marks is best achieved through a pro active trade mark policy and ideally an audit should be completed periodically. This gives assurance as to what marks your business owns and ensures that the appropriate policies are in place to protect these assets.
From a trade mark audit, you can discover what marks may be registered or may not be registered, whether marks are registered to a different address to the business or any information that needs to be updated with the relevant trade marks office.
An audit should also include enquiring with the marketing department as to any valuable advertising slogans, distinctive packaging or new marks which may be registrable. An enquiry in to whether the registered mark is protected for all the goods and services that it is being used is always advisable. In the situation where the mark is being used for a good or service for which it is not registered, an application to register the mark for the missing goods and services should be undertaken. On the other hand where trade marks are no longer being used i.e. through a process of rebranding, these marks should not be renewed.
It is important to keep records of all trade marks contained in the portfolio, including a clear representation of the mark as it is registered, details of the registration, details of users and renewal dates.
A trade mark owner should take active steps to watch for third party applications to register marks which may conflict with its registered or unregistered marks. The simplest method is to subscribe to a trade mark watch service which will look out for and report on the advertisement in the trade marks journal of any mark which is the same as or similar to the owners mark.Â This ensures that the owner is in a position to oppose registration or use of the mark promptly.
Overall a business needs to understand the importance or its IP rights and an audit is the best way to assess what trade marks they already have and what intellectual property rights they are yet to exploit commercially.