Don’t rely on Trademark Registrations
As most of you will come to appreciate from other Trademark Court actions we have reported in our news feed, it’s insufficient to have “a Trademark Registration” if the legal basis for owning it is incorrect or the detail in the Registration is wrong.
These essential things can only be checked by a Registered Trademark Attorney and are not looked at during Examination by the Trademark office.Trademark Registrations are constantly being cancelled by Courts because they do not comply with the Trademark Act requirements to “own”. Then the helpless ex-trademark owners wear the infringement consequences.
What Trademark Registrations were removed?
In the Anchorage case, three Trademark Registrations owned by an Australian company (ACP) were ordered by the Judge to be removed:1.ANCHORAGE
2.ANCHORAGE CAPITAL and
3.ANCHORAGE CAPITAL PARTNERSNow IP Australia has removed (cancelled) these Registered Trademarks.
Why were they removed?
Because they should have been “owned” by a United States (US) company because they had sufficient earlier use which qualified under the Trademark Act as “trademark use”. This is different from ordinary commercial use.
How long were these ex-trademarks owned by ACP?
They owned the three Trademark Registrations for 7 years (since 2011) before the Court case arose and their Trademark Registrations were then removed.This left ACP, the ex-owner of the Trademark Registrations in damage control, since they believed they owned the brand, had developed goodwill and reputation and had now had expensive litigation matters and losses.
The conflict was with different brands, so be careful of thinking your brand is “different”
If you are thinking it has to be the same trademark for problems to arise, you couldn’t be more mistaken. The other party had established owned of the brand but they had been using the extra word FUNDS (ANCHORAGE FUNDS), and they still managed to succeed to make out the case that the Trademarks should be removed.So if you’re thinking you’re “all good” in having a Registered Trademark, or an Accepted Trademark, you should really be thinking about having one of our Trademark Attorneys spend comprehensive time to look at your brand and trademark portfolio. It’s always a good idea to have your trademark application regularly audited, to ensure it is “current” and “complies” with your obligations under the Trademark Act and Regulations.
This article is written in general terms to assist and guide inventors and commercialisation institutions to avoid some common patenting mistakes. You should always seek specific advice concerning your unique situation from a Patent Attorney.