Trade marks are a valuable business asset and although they are intangible they can add significant value to a business. It is therefore important that you treat trade marks in the same way you would any other asset of your business.
Trade mark records should be regularly audited to ensure existing trade marks are up to date and provide adequate protection for your brands. In fact, it is a good idea to review the business as a whole to determine whether additional brands should be protected as trade marks.
WHAT IS A TRADE MARK AUDIT?
A trade mark audit involves a review and analysis of a brand owner’s trade mark portfolio and can be a useful tool in determining proper trade mark protection for existing brands as well as identifying new trade marks. Trade mark audits can also be used to determine the status and value of trade marks to a business.
WHERE DO I START?
The first step in conducting a trade mark audit is to identify existing trade marks. You should compile a list of your registered and pending trade marks and include the below information:
- Trade mark application/registration numbers;
- The trade mark;
- The goods and/or services covered by the applications/registrations;
- The current status of the marks;
- Relevant dates, such as the filing, registration and renewal dates;
- Country of registration.
If your company does not have details of its trade marks readily available, searches of official trade mark databases will need to be carried out. You may need to enlist the help of an IP professional for this task particularly where complex and extensive portfolios are concerned.
Careful consideration should be given to determine which entity owns the trade marks. Where there are multiple entities within a business group, it is a good idea to ensure that you conduct owner searches against all entities within the group to ensure all marks are captured.
If the business uses external lawyers to manage their trade mark portfolio, you should contact them to provide the relevant information.
REVIEW THE EXISTING MARKS AND CONSIDER UNREGISTERED TRADE MARK RIGHTS
Once the records have been collated, their details should be checked for accuracy.
At this juncture it would be prudent to assess your business’ current activities and IP strategy. Are there any new marks to be registered? Are any of the existing trade marks which are new redundant?
REVIEW EACH MARK
When conducting a review of your trade marks, consider:
- The ownership of the marks
Often overlooked but vitally important to the validity of a trade mark is the ownership of the mark. Clear chain of title should be examined and where necessary, the ownership should be updated to reflect not only the current owner by any previous changes in title including changes of name for example.
Any changes to the ownership of the marks should be recorded in each jurisdiction. Failure to do so could result in a loss of rights.
- Proper use of a mark
Trade mark registration provides the owner with exclusive rights to use the mark in respect of the goods/services for which it is registered.
It is important that a trade mark is used as it is registered and while slight alterations to the mark may qualify as use of the registered trade mark in some countries, careful consideration should be made as to whether the altered mark changes the identity of the registered mark. If it does, you should consider filing new applications for the altered mark.
Consistency of use is also important. Consider how the marks are used in marketing and promotional materials and on websites. Consider whether the TM or ® symbols should be used.
- Are your current trade marks of value to your business?
You may find that some of your trade marks are no longer in use. These marks should be assessed against the cost of maintaining your rights, that is, you may decide that you no longer need to renew some of your trade marks thereby freeing up funds for use in maintaining and expanding your trade mark portfolio.
You should priorities your marks as “core” and “non-core” and assess the markets in which you currently hold trade mark rights. Consider what markets may be required in future.
- Do you have trade mark licence agreements in place?
Is the business aware of any trade mark licence agreements with third parties? If so, these should be reviewed for accuracy and compliance.
Be aware that some countries require licences be recorded on the official government registers to be recognised. It may therefore be necessary to retain local counsel to arrange these recordals.
- Are there any encumbrances attached to the trade marks?
These include for example security interests over trade marks. These should be reviewed as part of the trade mark audit and the business should make a decision as to whether there are to be retained or removed.
Any security interests should be registered on the Personal Properties Securities Register (PPSR) so they do not lose priority. Furthermore, security holders should arrange the recordal of such interests on IP Australia’s records.
TAKE AWAY
Regular trade mark audits are vitally important to a business as they help to ensure that your trade mark rights accurately reflect your business activities now and can assist to manage your brand strategies as they evolve into the future.
brandU Legal is able to assist with trade mark audits for your business. If this is of interest to you, get in touch with us to discuss how we can help.