Last week’s newsletter How to avoid the biggest brand management mistakes, highlighted that the role of our business name and signs like logos, taglines, characters, or sounds is to enable buyers to recognise that it’s us.

Symbols like the Nike swoosh become well known because they’re consistently used year in, year out, for years – initially, accompanied by the brand name and then, once they’ve gained widespread recognition, on their own.

What can go wrong when trademarks are not used consistently is apparent from a 9 year Trademark dispute between Lacoste and Crocodile in New Zealand which concluded in 2017 with Lacoste losing its crocodile trademark.

Lacoste vs Crocodile International

Once an identifier is created and registered as a trademark you risk losing the registration if you don’t use it in the form in which it was registered.

Crocodile International noticed that Lacoste wasn’t using the design it had registered and applied to revoke Lacoste’s trademark for non-use.

Lacoste defended its trademark arguing that it should not lose it because while it didn’t use the crocodile design in the form it registered it, it did use crocodile designs in different ways and therefore such use was still using the trademark – that is a crocodile.

This broad argument that any use of a crocodile design was use of the registered crocodile trademark was rejected out of hand by the court.

Lacoste was effectively claiming a monopoly over the concept of a crocodile, said the court, revoking Lacoste’s trademark.

The cancellation of Lacoste’s trademark paved the way for Crocodile to register its own crocodile logo in New Zealand.

Why losing a trademark is to be avoided

When you have a registered trademark for something distinctive like a crocodile design in the clothing category as Lacoste had, it is virtually impossible for a competitor to also register their crocodile designs in the same category, even if their crocodile design looks nothing like yours. 

So, the reason the case was so hard fought, is that a registration effectively gives you a broad scope of protection. In Lacoste’s case the registration gave it a broad monopoly over the concept of a crocodile design.

But that monopoly only exists if you use the design you’ve registered in a consistent manner. It doesn’t give you a monopoly if you chop and change your design because then you’re not using the registered trademark.

Consistent use is how consumers recognise you so it makes sense to stick to whatever design you’ve registered for your trademark.

A trademark contains the value of your brand, so you’re throwing away a valuable asset if you use it in an inconsistent way and lose the registration.

This is an aspect of trademark use that marketers and business owners need to be aware of so they avoid changing the identifiers their business is using.

Use a clear process

Consistent use is how an identifier gains recognition through wider exposure, after all. So, there should be a clear process and guidelines in place within a business, perhaps requiring approval from the senior members of the team before changes are made to identifiers.

Once it’s decided to change existing designs, then re-register the new designs as trademarks to protect the altered designs. Otherwise, the business is at risk of losing its trademark.

Use it or lose it is a universal concept of trademark law across nations. It applies whether the registration is in New Zealand, the UK, the USA or any other country. In some countries the period might be 3 years, while in others, such as the UK it’s 5, but the principle itself applies across jurisdictions. 

Manage the Brand and its IP in a joined-up way

This case example illustrates yet another reason why the brand and its IP need to be managed in a joined-up way.

As it’s so important for SMEs to know how to manage their brand effectively, I’m now including the Bonus Brand Tuned program in our trademark registration services. It’s a resource that I show them how to use to put in place solid processes to protect their IP and to rectify past defects, where it’s possible to do so.

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

If you are potentially interested in accessing the Bonus Brand Tuned program as a standalone resource I am offering a 10% discount till the end of October. To claim it, simply email me at [email protected].

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