Are we using up all the trade marks?

The first trade mark registered in the UK was the Bass pale ale triangle, which was registered in 1876 and is still in use today. Since then, trade mark registrations have continued to be filed at a startling rate.

The UK Registry has calculated that at the current rate of filing in the EU and the UK, by 2006 the number of subsisting trade marks will have increased from 600,000 to over 900,000. Why is this important? Because I have a real fear that, just like oil and the rainforests, we are quickly using up all the trade marks! Nowhere is this more evident than in newspaper and magazine publishing. Any publisher who has launched a new title recently will know that one, if not the, deciding factor in deciding what name should be given to a new title is “is it available?”. The pot of available titles is getting smaller by the day.

Some commentators have said this is not a problem because since 1995, the types of mark it has become possible to register have been widened to include shapes, colours, sounds and even smells, so brands will just have to become less reliant on names. However, this development is of limited use to publishers, who cannot replace a title with a jingle.

What to do? Well, the reality is that of the thousands of trade mark registrations out there, a significant proportion are not being used, or are not being used in respect of all of the goods and services for which they are registered. If a trade mark is not used in respect of the goods or services for which it is registered in any continuous five-year period, anyone can apply to have the registration revoked.

However, the revocation procedure is lengthy, expensive and creates ill-feeling between the parties. A better answer could be found across the pond. In the US, in order to keep a trade mark registration alive, registered trade mark owners must provide evidence to the Registry to show they are indeed using the mark in respect of the goods and services covered by the registration.

Over here there is no such requirement and perhaps we need one. Trade mark owners could be asked to submit evidence of use as a condition of renewal. This is unlikely to be a popular development, but unless something is done, marketing teams will have to be increasingly creative in their choice of titles. How many more brands like Accenture, Consignia and Cahoot can we endure?

Anthony Misquitta is a lawyer at Farrer & Co

by Anthony Misquitta

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