Trade Marks Hosed Out
In another example of the fluid nature of trade mark rights, the trade marks office has hosed out registrations which were previously held by Planet Plumbing (warning – more puns to follow).
Although the trade marks had been registered for a number of years, they were no longer being used by their owner, which presented a third party with an opportunity to apply for their removal. That is because trade marks work on the basis of ‘use it or lose it’, so they can be removed from the register (i.e. registration cancelled) if they sit idle and are no longer used to promote the goods/services for which they are protected.
The Registrar of Trade Marks removed the following two Planet Plumbing logo trade marks after the owner failed to show that they were still in active use.
The marks, originally registered in 1999 and 2009 respectively, were as follows:
- Registered in relation to Plumbing including general plumbing and maintenance; drainage; gas fitting; and roofing services.
- Registered in relation to logo design services.
New Branding
However, as often happens, the owner had undergone a rebranding and had been using a new logo since 2010. The owner registered that new logo in July 2010, shown below as a trade mark:
- Registered in relation to logo design services.
To maintain registration (where trade marks are challenged and removal from the register is sought), the trade mark owner must show that it has used the mark, in promoting the goods or services claimed, within the last 3 years.
In this case, Green Planet Maintenance Pty Ltd applied to have the registered marks removed on the basis that they had not been used in the last 3 years. The owner opposed removal and argued that the use of the new logo was evidence of use of the registered marks as they each contained common elements and were substantially similar on a side-by-side comparison (i.e. the additions or alterations from the old marks to the new logo did not substantially affect their identity).
The owner also argued that the words “planet plumbing” had (separately) still been used in the promotion of the business, which means that the existing marks were still in use.
The Registrar instead found that the owner had clearly intended to abandon the old marks in favour of the new logo and that there was “a total impression of dissimilarity” between the old and the new, even though there were some similar features or elements.
The decision did consider whether there may have been something more to argue in the event that the logo assisted to identify the trade mark (e.g. a picture of a planet) but ultimately did not need to determine that point.
Key Takeaways
- Selecting which trade marks to register is crucial.
- Consideration should be given to registration of words or logos or both.
- It is essential to register marks in the form they will be used.
- If marks are not used, they may be removed and rights can be lost.
- Trade mark protection is not a case of “set and forget”.
- Trade marks should regularly be reviewed to ensure that:
- the current versions are protected;
- if changes have been made, that advice has been sought about protection; and
- to consider whether new or different goods/services are promoted under the mark.
Although it wasn’t argued in the case, the two more recent Planet Plumbing marks were registered for ‘logo design services’. That offered no protection to the owner who confirmed that the business undertook plumbing work. Accordingly, the marks were not ‘used’ in relation to the services claimed and should have been removed in any event.
Wading through (pun intended) trade mark rights can be tricky for the inexperienced. The case also shows the benefit of getting advice on what marks to register to have best protection.
In this case, the logo marks provided a visual identifier and because they are recognised by customers and in the market, it ordinarily makes sense to register them. However, registering words on their own (without logo) is normally considered to be a stronger form of protection and allows greater flexibility of use. Often a protection strategy will involve securing both words and logos. If words and logos were registered in this case, Planet Plumbing’s rights might not have ended up down the drain.
If you have any questions, or need advice about registering or protecting your organisation’s trade marks, please contact me on (07) 3224 0261.
