An essential part of a trademark’s lifecycle does not begin and end at securing its registration. It is imperative to maintain the mark continuously to benefit from the said registration. The same requires constant vigilance and ensuring all checks and balances that we shall be looking into in this article.
Understanding Trademark Maintenance
Trademark maintenance stands for the activities that enterprises or individual rights holders undertake to ensure the constant validity of their trademarks post-registration. The scope of maintenance essentially includes the following:
- Filing for Renewal
- Sending Cautionary Notices
- Payment of Taxes
- Filing Affidavit of Use
Let us understand each of these subjectively.
1. Filing for Renewal
The process of filing for renewal may differ in each jurisdiction the renewal action is sought. There is no upper limit set as to the number of times the renewal may be sought. However, the renewal application must be filed if one wants to enjoy the set of rights availed upon registration of the trademark after the lapse of the duration of the trademark, which is usually ten years after the date of application. The responsibility to ensure that the renewal is filed for before the due date lies on the respective rights holder, even though the Trademark Office does generate an auto-intimation mail. Therefore, it is necessary to remember one’s renewal date.
2. Send out Cautionary Notices
It is pertinent for the rights holder to make publications to notify the competing parties and the public, in general, that the trademark is his proprietary asset and any infringing behavior will not be tolerated. Doing the same helps establish that the owners have advertised and made efforts to make their mark well known and prevent any person from adopting the said mark dishonestly. Also, where trans-border rights are sought, it helps send out cautionary notices to respective trademark offices that enable advertisements. It holds for countries like Eritrea, Maldives, Myanmar, etc.
3. Pay Your Taxes
The trademark owners must pay the income taxes imposed by their respective governments every year in an orderly fashion and format.
4. Affidavit of Use
In many countries, the declaration of use or affidavit of use is often filed along with the request for renewal. In this legal document, the proprietor of a mark is required to showcase a specimen that the trademark has been used in commerce on one of the goods and services in each international class, as may be claimed in the application for registration. An appropriate example can be the specimen of the label affixed on containers or boxes of the goods, literature available on the goods like sale receipts or invoices, copy of advertisements, etc.
Additional Points of Consideration
- Use the Appropriate Trademark for Which You Filed the Application
Upon registration of the mark, the rights holder must utilize the same representation of the mark that has been registered since it provides strength to the mark. Furthermore, before obtaining registration, the rights holder shall make use of the ‘TM’ symbol; however, it is beneficial to use the ‘R’ symbol post-registration as it enables the public to know that substantial effort and investment has been made by the proprietor to safeguard his proprietary mark.
- Don’t Give in to Genericide
‘Genericide’ is a term often used to denote the end of those marks that become so common that they can barely be used to trace the actual origin of the mark to one proprietor. It stands correct for marks like ‘xerox,’ ‘escalators,’ and ‘Kleenex.’ These three were first used as trademarks, but at a later stage, they became generic as people began to identify these as a class of goods itself rather than just a good originating from a particular proprietor, which failed the basic purpose of seeking Trademark Registration. Therefore, it is necessary to address and govern who is using your mark and in what manner.
- Constant Vigilance on New Filings
It is necessary to keep a tab on any new filings, not just in the jurisdiction where one has registered his marks but also in prospective jurisdictions where further expansion may be sought. Therefore, a proper Trademark Search should be routinely conducted to ensure that the strength of the mark is not diluted due to a new entrant.
- Don’t Shy Away from Enforcing Your Mark
After obtaining registration of the mark, it is necessary to watch out for similar trademarks, which may be riding on your reputation to gain an unfair advantage in the market. Therefore, it requires constant vigilance and taking prompt action against such illegal and unsolicited use of your mark. It also helps create an impression in the market that the rights holder is aware of his rights and will not shy from taking the infringers to court.
- Update Your Trademark Portfolio
With time, a rights holder may venture and adapt to newer markets while expanding the scope of his goods and services, which were initially reflected in his Trademark Application. Where any expansion is sought, it is necessary to file for additional trademarks to ensure that the trademark is also reserved for new classes of goods and services.
Consider, for example, that a registered trademark ‘XCV’ is used for marking school bags and laptop bags; the proprietor also begins to market school uniforms and books at some later stage after establishing the prior business. The same would require him to file another registration for the newly added goods to extend Trademark Protection to those goods as well.
- Beware of Scammers
Many cybersquatters are waiting on the fence to extort hefty amounts from proprietors of marks. In addition to such digital nuisance, there is no dearth of scammers on the internet who send out unsolicited third-party mails appearing as if they are associated with some trademark office where one may have registered a trademark. However, these are scammers making suspicious communication, trying to derive vital information and trade secrets from the proprietor. Therefore, it is necessary to be aware of such unscrupulous entries. Many trademark offices make known the public of such entities through public advertisements as well.
Therefore, it can be concluded that with registration comes a set of rights but also a responsibility of maintenance. The actual trademark lifecycle begins only after the trademark has been registered since it requires constant vigilance and directing recourses and attention in the right frame to ensure that no unfair advantage is scraped out in favor of the third parties. The points stated above should be taken into serious consideration to derive the absolute advantage of one’s mark.