Apple and MacDonalds are household brands that have lost their EU trademarks in recent years, meaning that third parties may now freely use ‘Think Different’ and Big Mac in the EU.

The reason the marks were lost is that the companies were unable to prove that they had been genuinely using these registered signs in the previous 5 years. When that happens, the other party who wants to use the marks will be able to apply to have the trademark registrations cancelled.

Proof of use of trademarks

It invariably happens when companies enforce their trademark rights against third parties, that those third parties put them to proof of use.

What this means is that the legal system shifts the burden of proof so that the brand owners need to show that they’re still genuinely using their marks. In other words, the onus of proof is NOT on the third party who the brand owner is suing. It’s on the brand owner who is trying to enforce their rights.

The trademark system will only help you to enforce marks that are still in use and can be proved to be in use. So, as soon as your mark is 5 years old, you should be thinking about how you’re using your marks and make sure you use them in a trademark sense and build up a body of evidence of the use you’re making of trademarks.

Designation of origin

Among other things, that involves the need to use trademarks as designations of origin. That means the registered sign must be used as an identifier that buyers see when they’re making purchases or discovering a business through its advertising and promotional activities.

A “designation of origin” is any sign, such as a name, logo, tagline, symbol or sound that is used by a brand to identify its business or its products and services and distinguish them from those of other businesses.

For a sign to be able to perform this function the sign must be visible. It can’t perform its essential function if, as in Apple’s case, the sign only appears in fine print on the bottom of its boxes. The evidence showed photos of boxes for old iMacs where “Think Different” appeared in small print, but that evidence was inadequate because the sign wasn’t visible to buyers there.

Similarly, MacDonald’s wasn’t able to prove that it was genuinely using its Big Mac trademark in connection with the sale or advertising of its burgers.

So, it’s essential for brand managers, who are invariably in the marketing department in larger organisations, to ensure that all marks that are registered are being properly used.

And as mentioned, once the marks are more than 5 years old, the brand managers should take active steps to ensure they maintain evidence of use to avoid losing their registrations.

These issues shouldn’t be lost sight of until the marks need to be enforced against third parties. By then it’s often too late to gather the necessary quality of evidence in the time constraints of the court process. Without such evidence the brand’s registrations are vulnerable to cancellation for non use.

Why mistakes happen and how to prevent them

Such issues often fall between the cracks in organisations because the brand managers who are closest to the brand and are aware of how logos and taglines and other brand signs are being used, are not always aware of the need to use trademarks as designations of origin and to maintain evidence of such use.

As mentioned, using a mark as a designation of origin means that your brand name or tagline or symbol should be visible so buyers can tell you apart from other traders due to your unique brand signs. A trademark registration provides you with an identity which cannot be imitated by competitors. So, if you’ve registered a mark, you should use it, or risk losing it.

The mark shouldn’t be tucked away somewhere where it’s not visible to buyers, otherwise, the mark won’t be able to do its job of identifying your goods and services and distinguishing them from others.

Despite the fact that the marketing department is best placed to monitor how the brand’s trademarks are being used and is responsible for managing the brand they won’t be able to discharge their responsibility for IP related issues that fall within their remit if they don’t understand IP, in particular, what’s required to properly use or maintain a mark.

Managing the brand and its IP together

You can’t fix the problem of lack of knowledge of IP by marketers to shift responsibility for Brand Management to lawyers because the legal department isn’t the department that decides how to use the brand’s trademarks in day-to-day operations. Nor are lawyers trained in branding and marketing. So, they lack the necessary knowledge to be able to discharge the brand management function.

And placing brand management in the hands of the marketing department clearly isn’t working given the knowledge gap that exists around IP among marketers and designers.

To manage a brand it’s essential to know how to take account of IP issues that are part and parcel of the brand, and that fall squarely within the brand management remit

The fact that marketers and designers who create and manage brands are not trained in intellectual property is an issue that adversely impacts businesses of all sizes.

Expecting lawyers to make up for marketers’ knowledge gap by spoon feeding the marketing department isn’t workable either simply because lawyers can’t always know what IP knowledge marketers may be missing.

I happen to know that marketers receive no training in IP because when I did the Mini Mbas in Marketing and Brand management with Mark Ritson and Marketing week there was a paltry amount of IP taught in the programs. So, I now assume a marketer or designer knows little about IP until I’m proved wrong.

I suspect the branding industry doesn’t appreciate how much IP is part and parcel of the brand. Otherwise, marketers would be given much more training in IP when they attend brand management courses instead of being left to learn about IP on the job.

The problem with learning from experience is that you inevitably make mistakes, and that can sometimes lead to devastating consequences.

The Apple and MacDonalds cases are an example of what can go wrong when marketers are left to learn from mistakes, and don’t manage the brand and its IP in a joined-up way.

If the biggest brands are not finding ways to look after their brand and its associated IP in a co-ordinated way, you can imagine how big a problem this is for the 99% + of businesses that are SMEs.

I’ll publish a series of articles next week on LinkedIn illustrating through case examples, what goes wrong when IP is incorrectly addressed. If you’d like to opt into receiving emails about them please resubscribe here so that when there’s more frequent content than monthly or weekly, you get those emails

Change is necessary

One change I’d like to see in the world is for marketers and designers to be adequately trained in IP.

Leaving them to pick up the IP knowledge they’re missing through experience means they might mistake some of the IP myths and misinformation that’s out there, for truths. It’s all too easy to learn incorrect information which you pass on and act on without even realising it.

To address the knowledge gap problem for SMEs, marketers and designers, I’ve created the Bonus Brand Tuned program which you should consider purchasing. It’s a toolkit that enables businesses to learn more about IP. It’s possible to do a search to access information you want to find out more about.

Here’s a quick 2 minute video that shows what Brand Tuned looks like on the inside.

Using this resource makes it possible for businesses to quickly access the IP information they need. As such, it’s a useful tool whether you’re creating new brands or are managing a brand because you get to address brand and IP issues in a joined-up way.

If you are considering buying the Bonus Brand Tuned program and have questions please email me at [email protected].

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