If you are one of the “lucky ones” who successfully registered your trademark with the competent office or organisation, you may think that all the dangers connected with your trademark are behind you. That is not the case. Below, we present five reasons that can lead to the loss of your trademark.
1. “Use it or lose it”
If you have protected your trademark with the competent office, it is crucial that you actually use it. Third parties may request cancellation of your registration if you have not used the trademark in the last five years. They may request this once your trademark has been registered for at least five years.
If such a request is made by a third party, the competent office will require you to provide evidence that you have genuinely used your trademark in recent years for the goods or services for which you protected it, and in the territory where you sought protection. If you have changed your trademark over the years, the competent office will also assess whether the mark used is still sufficiently similar to your registered trademark so that the distinctive character of the trademark remains the same.
If the appearance of the trademark changes over time, it is wise to consider registering a new sign.
2. Genericness of the trademark
Genericide has happened to trademarks such as “aspirin”, “yo-yo”, “vileda” and many others, turning registered trademarks into generic names for products.
The main characteristic or function that a trademark must perform is distinctiveness. When a trademark becomes so general that consumers can no longer distinguish between the goods or services of different traders, the trademark no longer fulfils its main purpose. It is therefore important not to use your trademark in a way that could turn it into a general term for your goods or services.
You must also take all appropriate measures, such as monitoring the use of your licences, educating the public and preventing infringements, to stop others from turning your trademark into a generic name.
3. Misleading consumers
Your trademark must never mislead the public, particularly as regards the nature, quality or geographical origin of your product or services. The competent office assesses this criterion at the time of trademark registration, but it may also be challenged later by a third party.
One such example is the trademark “MÖVENPICK OF SWITZERLAND”, which was cancelled because the goods in question were produced in Germany and not Switzerland, as a consumer might assume from the name of the trademark itself. A trademark would also be considered misleading if, for example, its name suggested that the goods were made of a particular material, while a different material was actually used for the products.
4. Invalidity
Your trademark registration may be declared invalid for various reasons. A dispute with a third party may arise and your trademark may be cancelled because it is identical to that third party’s earlier trademark for identical goods or services for which the earlier trademark is registered. For example, the owner of the conflicting trademark may only notice your trademark application after you have already obtained protection and your trademark has been registered.
In that case, the only way for that owner to remove your trademark from the register is to try to have it invalidated or cancelled. Authorised attorneys or trademark and design representatives try to avoid this as much as possible by searching existing trademark databases before filing an application and warning you about possible conflicts.
Other reasons that may lead to the invalidity of a trademark are reasons that the competent office should normally examine ex officio already when the trademark application is filed, but which it overlooked and therefore “mistakenly” registered the trademark. This can happen in the case of descriptiveness of the trademark, for example if you manufacture sports footwear and the name of your trademark is Sports Footwear, lack of distinctive character of the trademark, and similar reasons.
5. Do not forget its birthday!
It is essential not to forget to renew the trademark registration and pay the relevant fees when its protection is about to expire, because otherwise your registration will lapse. Trademark registration must be renewed every 10 years.
It is therefore important to ensure that your contact details are up to date in trademark registers and in the records of authorised representatives, so that you can be reminded in time to renew your trademark.