Keeping an eye on your trade mark

Having a registered trade mark really helps in protecting your brand – but registration is only one of the strategies that you should put in place in relation to protecting your brand.

You need to keep an eye out on your trade mark and make sure that it’s being used appropriately. You also need to keep an eye out on what the competition is doing. And finally, you need to be aware of public perception of your trade mark and how it relates to your product or services.

If you don’t do this, you and you make it big, you could end up with your trade mark being wildly successful – for the wrong reasons! This can happen if your trade mark – or brand – is being used as a generic reference to the type of product or service that you offer.

A good and recent example of this happened in a recent Federal Court case between Sanitarium and a smaller competitor, Irrewarra Sourdough. Sanitarium is the authorised user of the trade mark “GRANOLA” within Australia. “GRANOLA” is actually an invented word to describe a mixture of cereal, nuts, and fruits. Sanitarium brought enforcement proceedings against Irrewarra Sourdough, who was selling a similar product and on the packaging, described the product as “all natural hand-made granola”.

The court ultimately found that Irrewarra’s use of the word “GRANOLA” was used as a description of the product and not as use of a trade mark. There was even evidence that the word “GRANOLA” was even used in Australian dictionaries and cookbooks.

Ultimately Sanitarium’s enforcement action failed – despite being an authorised user of the trade mark, the public perception in Australia is that “GRANOLA” can be used as a description for a product that Sanitarium sells.

In the worst case scenario, Sanitarium (or the registered owner of the mark) may be facing action in the future from a competitor seeking to remove its trade mark registration on the grounds that the trade mark has become a generic description!

This case serves as a cautionary tale for companies whose products and trade marks have become too popular in the public sphere. As previously mentioned – keep an eye on your trade mark! Through use of clever marketing and public relations exercises you can ensure that the public understands you.