Will the crocodile bite?

Obligation of use

A trademark registration grants a trademark owner exclusive rights to a particular sign. However, a trademark registration does not only entail rights, but also obligations. More specifically, trademark law imposes an obligation of use on trademark owners.

This obligation of use means that a trademark owner must actually use his trademark starting from five years after registration. If a trademark owner still does not use his trademark five years after registration, the trademark registration is subject to cancellation. This means that third parties can file a claim with the relevant trademark office to demand the cancellation of the unused mark. In the absence of proof of use, the trademark registration will be cancelled.

It also follows from this obligation of use that trademark owners should be very vigilant about modifications to their trademark. This is particularly important for trademark registrations for logos: if changes are made to the logo after the registration, it may be the case that use of the new logo cannot be considered genuine use of the logo as registered. Consequently, the old trademark registration is subject to cancellation and the trademark owner will have to file a new trademark application to protect the new logo.

Lacoste v. Crocodile International

Even well-known trademark owners sometimes fall prey to this obligation of use. A well-known example of this is Lacoste. Crocodile International, also a clothing company, had noticed that Lacoste's registered logo in New Zealand did not match the logo Lacoste used in practice. Although both did consist of a crocodile, there were significant visual differences between the two logos. Crocodile International argued that these differences were sufficiently significant so that there could be no genuine use of the registered logo, as well as that Lacoste did not have a monopoly on the mere concept of a crocodile. After years of a legal battle, Crocodile International finally succeeded in getting the disputed trademark registration cancelled, resulting in Lacoste losing their trademark registration.

Think again!

Other well-known examples include Apple's "Think Different" slogan and even McDonalds' Big Mac. Indeed, both failed to provide proof of use for these registrations. For example, Apple, which no longer uses this slogan, could only provide as evidence photos of old boxes of iMacs with "Think Different" printed in small on the bottom of the box. This evidence was not accepted to prove use, and Apple lost their registration. Finally, McDonalds was seriously sloppy: when required to provide proof of use for the "Big Mac" trademark, they had barely submitted any evidence to prove this use. While Big Mac may undoubtedly be a hugely well-known brand, even for well-known brands, trademark owners must show proof of use themselves. After all, official trademark offices must remain independent and therefore cannot simply decide that a trademark is still in use without the trademark owner submitting concrete evidence of this. Fortunately for McDonalds, however, in appeal they did manage to submit sufficient evidence to prove use.

Do you have an updated logo and are you wondering whether your trademark registration is sufficient to protect the new version as well? Feel free to contact us for more information.