Trade mark registrations can provide potentially perpetual protection for a brand if maintained appropriately. This means that trade mark registrations can be highly valuable and important intellectual property assets for businesses. However, if a registered trade mark is not put to genuine use then it will in time become vulnerable to revocation.

In this article we discuss the risk of revocation and what practical steps can be taken to minimise the risk.

Trade mark registrations can become vulnerable to revocation

Applying for registration of a trade mark in New Zealand can be a relatively straightforward process. However, simply registering a trade mark does not necessarily mean it can be protected forever, even if all renewal fees are paid when due. 

For example, a New Zealand trade mark registration may be vulnerable to revocation if it has been registered for more than three years but has not been used for a continuous period of three years or more. Any person who is "aggrieved" (ie someone who is in some way impacted by the trade mark registration remaining on the register) can then apply to have the trade mark registration revoked. To defend such a challenge, the onus will be on the trade mark owner to prove that they have put the trade mark to genuine use in trade in New Zealand for the goods or services covered by the registration. 

So, what qualifies as "use" of a trade mark and when is that use "genuine"?

“Use” of a trade mark must be “genuine”

"Use" includes use of the trade mark in a form that does not alter the distinctive character of the mark as registered. It also includes applying the mark to goods and services, even where those goods or services are solely for export as well as use of the registered mark as part of a more complex registered mark. For example, use of a registration for “Jellyfish Taking Over the Seas” would constitute use of a registration for “Jellyfish”. 

The use that is relevant is use by the trade mark owner or under the owner’s authorisation and control (eg use by a licensee).

"Genuine" use means actual use of the mark. It does not include use of a trade mark that is only internal or token, or use solely to preserve the rights that the trade mark gives. 

There is no minimum amount of use required. However, generally, where less evidence of use is provided, the quality of the evidence of use must be higher.

If a trade mark has only been genuinely used for some of the goods or services it is registered for, then it may be vulnerable to partial revocation for the remaining goods/services.

What if the circumstances meant that the trade mark could not be used?

If there has been no genuine use of a trade mark, it is possible for a trade mark owner to defend a non-use revocation challenge if the trade mark was not used because of special circumstances outside of the trade mark owner’s control.

Proving special circumstances is a high threshold and will depend on the particular facts of each case. However, generally the special circumstances must:

• have prevented use of the mark or made use of the mark impractical (albeit not necessarily impossible);
• be outside of the trade mark owner’s control;
• have occurred during the non-use period;
• be of a trade or business nature; and
• have a causal connection with the non-use of the trade mark.

Practical steps for trade mark owners 

The most straightforward way to avoid the risk of revocation because of non-use is to ensure that a registered trade mark is put to genuine use for the goods/services covered by the registration. Other practical steps that trade mark owners should take include:

• regularly reviewing their registered trade mark portfolios and the trade marks actually used, and filing new trade mark applications if necessary to ensure adequate protection; 
• keeping appropriate records of use of registered trade marks,
• such as use in advertising material and on packaging; and
• if a registered trade mark is not used, keeping evidence of any special reasons for its non-use and considering using the mark as soon as possible. 

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