The start of a New Year is a great time to rethink and refresh our goals for the year ahead, and for us that means revising old intellectual property plans and devising new, competitive IP strategies.
Trademark protection will never go out of style and trademark owners must remain proactive in navigating the dynamic landscape of trademark rights. Be it to build upon an impressive trademark portfolio or to leverage licensing rights with clients in different sectors, the New Year presents an excellent opportunity to update and refresh trademark plans to enhance and maintain a competitive edge in the ever changing market.
Here are three pinpoints to begin from for trademark owners:
#1 Determine if your trademark has changed over time.
As brands mature over the years, it is very common for companies to shift brand identities for various reasons, such as an increase in brand offerings or to cater to a wider audience. Brands may undergo name, logo or design changes to keep up with the demands of the market. Sometimes, this includes a complete rebranding, which will affect the trademark protection gained in the first place.
Depending on the jurisdiction whereby the trademark is filed, minor changes may be made to the registered mark and the mark will remain protected as long as major changes are yet to be undertaken by the owners. For example, changes in size or positioning within the mark is deemed to be a minor alteration. Changes in the letters, design or punctuation of the registered mark is most likely deemed as a major alteration, therefore companies will be required to file for a new trademark going forward to ‘maintain’ trademark protection for the brand.
It is crucial for trademark owners to consult a professional prior to making any alterations to a registered mark to prevent the loss of protection or give rise to potential conflicts with third parties. Trademark owners will need to conduct a brand new trademark search and to file a separate application for the amended trademark, with the appropriate classifications should there be a change in the range of goods or services offered.
#2 Review trademark licensing agreements.
Trademark licensing allows a trademark owner to grant permission to a third party the rights to use or sell goods or services under the agreed upon trademark under certain conditions. Often a mutually beneficial agreement, licensing allows trademark owners to generate profit through royalties whilst licensees gain access to an established brand to build upon existing brand value.
However, companies are required to review licensing agreements from time to time to safeguard against the unlicensed use of a trademark. Establishing clear guidelines and vigilant monitoring of third party use are ways to properly enforce a licensing agreement.
Here are five important checkpoints in reviewing licensing agreements:
- Validate third parties involved in the license agreement, including names, addresses and qualifications.
- Define the range of use and restrictions of the license and verify IP assets included in the agreement.
- Be clear on payment terms, termination clauses and liabilities for losses or damages for the licensed assets.
- Review and revise non-disclosure agreements to ensure all confidential information is updated in the license agreement.
- Stay updated on the IP laws and regulations of the region and apply necessary changes to the license agreement.
#3 Conduct a trademark search to identify possible infringements.
Distinctiveness of a brand comes with time, and oftentimes the success of a brand may inspire third parties to produce same or similar products to be sold on the market.
A local and recent example of trademark infringement can be understood from the case study of Sambal Nyet and Sambal Nyet Khairi. The original producer and distributor of the famous sambal, Sambal Nyet, faced an IP obstacle as a separate entity began selling the same product featuring the same name and logo on online platforms, such as Shopee. The incident left buyers dissatisfied as many confused the imitation product as the original Sambal Nyet. Khairul Amin, the owner of Sambal Nyet, has since filed a dispute against the imitators to the Malaysian Intellectual Property Office (MyIPO).
The case of Sambal Nyet is a reminder to trademark owners to be vigilant with competitor products on the market, especially when one’s brand has gained significant visibility. Conducting a trademark search on local and national IP databases is a great way to detect potential trademark infringers. Trademark professionals can provide assistance to conduct a thorough and comprehensive search and to provide additional advice on actionable steps should potential conflicts arise.
Quality Oracle are a team of IP professionals helping clients achieve their trademark, patent, copyright and I.D. goals since 1993. Get started on the right path with trust, knowledge and most importantly, with us.