Practical Suggestions to prevent problems
- Use it or lose it!
This famous principle of “use it or lose it” applies also to IP and in particular to trademarks. Virtually, all trademark laws provide that owners have five years from the registration date to start using their mark, failing which anyone can initiate a cancellation action against these marks and possibly register them in their own name.
This principle applies to a certain extent also to patents: if you do not use your patented invention in a given country, the Government may commence proceedings to issue a “compulsory license” through which you will in fact lose the right to enforce your patent for a certain period of time. The Government in question will appoint a local company to produce your invention. This is however quite rare.
- Secondary Meaning & Genericization
The level of distinctiveness of your mark, and therefore its market power and capacity to be enforced, may change with the time. Extensive and consistent use over the years my increase the distinctiveness of your mark, through a process called “secondary meaning”, also known as “acquired distinctiveness”. By way of example, your rather descriptive/weak mark may become stronger and stronger and acquire higher levels of distinctiveness through use and time.
On the other hand, a mark’s distinctiveness may fade and even disappear through a legal phenomenon called “genericization ”. If the average consumer of a country starts using your mark not only to refer to your own products or services, but as a general term to indicate any product/service of the same category, then you may be in trouble. Should this be the case, any court could in principle declare the “genericization” of the mark in question, as it would have lost its capacity to distinguish the goods/services of one specific undertaking..
Here are some tips to make sure that you a) may benefit from “secondary meaning” and b) avoid at all cost the “genericization” of your mark:
- The more you use your mark, the more likely you are to increase its distinctiveness
- Use your mark as … a mark, and not as a verb, noun, or as an adjective (by way of example, Google® is fighting to prevent the genericization of its mark, by systematically opposing to the utilization of “to Google” as a verb indicating “to research on the internet”).
- Use your mark consistently, without major variations as compared to the version that you originally filed.
- If you foresee the risk of genericization (for example because you have invented a new product), it might be wise to invent a generic term to indicate such a product. You will then use it together with your trademark. This will clearly indicate that the mark is not the generic name, and as such, it maintains its distinctive character.
- If you notice your marks being used in any context (tv, newspapers, etc.) as a generic term, you should take steps to inform the party in question that the term is a registered and protected mark and should only be used as such by its legitimate owner or with his/her consent.
- Be Your Own Watchdog
Keeping an eye on the market (both at home and abroad) is a fundamental step to ensure effective commercialisation of your IPRs. Far too often, business competitors attempt to infringe each other’s IP rights by copying them, imitating them, in short, by cheating.
You should therefore monitor the market to see if anyone is selling products bearing your mark, or if the shape of their products is too similar to your registered industrial design. Check also the new products appearing on the market as they might contain your precious technology. This may imply checking shops and malls where products carrying your mark, design or patent may be illegally sold, monitoring the press, social media and the websites of companies using your IPRs without authorization, etc. Do this exercise periodically.
You can also use some online tools to help you monitor the market. Google alerts is one of them. It can notify you when words or phrases similar to your mark are mentioned online. In addition, there are private sector companies that offer nation-wide or world-wide watch-dog services.
Finally, you should make sure that nobody attempts to protect an IPR which infringes upon your own registered IPR. In this context, you can monitor the official gazettes or journals where the various IPRs are published after filing or after registration.
Once you detect a possible violation of one of your IPRs, then you have to defend your rights. Enforcing your IPRs is fundamental as not only it can represent a valuable source of revenues, but it gives a very strong message about your seriousness towards protecting your rights and dissuade further infringements. See Chapter IV of the Handbook on IP Enforcement.
- Use of ® , “TM”, “©” signs
Using the following symbols is highly advisable:
- ® or TM (or even “Registered Trademark”) for trademarks;
- ID or “Registered Design” for industrial designs;
- “Registered Patent” for registered inventions; and
- © for copyrighted works
It may work as a powerful warning message to potential good or bath faith infringers of your IPRs, and it educates your consumers to the fact that your IPRs are duly protected (registered or applied for).
Just one word of caution: do not use the word “Registered” or the symbol ® if your IPRs are simply applied for, but the registration process has not ended yet.
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