Lately, we have been hearing news about 3D trademarks not being as valuable as assumed, which I commented on in a blog post here on our Hannes Snellman blog earlier this summer. Just the other week, Ferrari lost its rights to its iconic Testarossa trademark to a toy company in Germany (Landgericht Düsseldorf, case 2a O 166/16 of 2 August 2017), while the latest news from across the Atlantic is that the Supreme Court might rule on whether the Google trademark has become degenerated.
The fact that trademark case law is constantly evolving is nothing new. Still, surprisingly, many companies update their trademark strategies far too rarely. Size does not always matter when it comes to a trademark portfolio, but its content and sophistication does. A conscious decision not to register trademarks or letting trademark registrations expire can sometimes be strategically as smart as applying for full protection. It all depends on the situation and timing, and one solution does not fit all.
Reviewing your trademark portfolio and brand protection strategy – or perhaps even creating a brand protection strategy from scratch – will, in the long run, save time and money. In the back-to-school spirit of early autumn, please find some questions that will help you review and update your company’s brand protection strategy below:
- Have you identified all the trademarks and the “look and feel” of your company? Are the essential trademarks sufficiently protected?
- Are all the registered trademarks in use and can the use be proven, if needed?
- Does your company use its registered trademarks in their registered form? Are the registrations still up-to-date from the point of view of the trademark classes and the geographical areas they are registered to cover?
- What happens when a registered trademark is about to expire? Many registered trademarks might turn out to have been registered and/or renewed out of habit; it might be time to let them go or register them in another form.
- Is anyone in charge of monitoring possible infringing third-party trademarks?
As with all assets, brands and trademarks need attention and care from time to time in order to preserve and increase their value. Making sure that your company’s trademark protection strategy is up-to-date will also put the company in a better position to maintain and defend its brand.
Senior Associate at Hannes Snellman