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If You Don't Use a Trademark, Does That Equate to "Trademark Use"?

By James Wan

What you need to know (in a nutshell)

  1. The correct continued use and maintenance of a registered trademark is necessary to protect it from being removed from the trademarks register by third parties.
  2. The concept of “use as a trademark” involves using the trademark as a “badge of origin” to connect the goods or services to the person or entity applying the trademark or the trademark owner.
  3. The question of whether hiding or ceasing the use of a trademark as part of a marketing strategy can be considered “use as a trademark” has not yet been addressed by Australian courts.

Full Article

We explain PepsiCo’s previous Dorito campaign and its effect on trademark maintenance according to the principle of “use it or lose it”. Trademark attorneys remind companies of the importance of using their registered trademarks in order to keep them.

If a trademark owner does not continue to use and maintain it properly, third parties may challenge the registration on the grounds of non-use.

PepsiCo launched an “anti-ad” campaign targeting millennials that do not feature the DORITOS logo. Instead, it reads “LOGO GOES HERE,” offering plain packaging versions of its product for sale.

Millennial bloggers debated whether it is an effective promotional tactic, but this article looks further into its effects on trademark registration in Australia. Namely, will PepsiCo’s anti-ad campaign be viewed as trademark use and enough to protect against a non-use action?

What is a trademark use?

In essence, using a trademark as a “badge of origin” implies that the goods/services it is associated with come from the same entity or person who applied for the trademark.

Trademark use and exploitation are varied. It’s impossible to establish universal rules or criteria for such “usage” because it changes based on product, target audience, industry, etcetera. Common uses of trademarks are on: invoices; packaging; swing-tags; websites ads and products/packaging bearing the trademarks. The connection between a company’s business activities/promotion lies at the heart of this usage style.

PepsiCo’s ad campaign of deliberately hiding its trademark has led to a discussion about whether this strengthens the bond between brand and product. Is it still “use as a trademark” even when hidden?

The Australian courts have yet to address this issue, so the definitive answer is uncertain.

What about well-known trademarks?

Iconic brands like Google, Apple, Coca Cola and Facebook are so well-known that you don’t need to be shown the logo or told what it is for recognition. The mere hint of a related element can immediately bring these marks to mind.

A brand may not need to demonstrate the actual use of a trademark if it is widely known and the key elements that form the mark are recognizable. This highlights how powerful a strong trademark can be when assessing infringement issues.

PepsiCo’s anti-ad campaign may abstractly reference a trademark, but it does not use the mark as one. So even if the symbol is widely known, this doesn’t mean it has been used or misused by PepsiCo.

The 2010 rejection of Red Bull GmbH’s application for their stylised RED logo may give a clue. They tried to use the wide popularity and recognition of their ‘RED BULL’ mark as proof that it was unique enough to register, but they were not successful in this endeavour due to the unavailability of evidence demonstrating sufficient usage as an identifier.

In cases like PepsiCo’s anti-ad, it is likely that the “use as a trademark” rule depends largely on either IPAustralia or Court. The Red Bull situation demonstrates how important evidence and use of the trademark are when making an application.

Key takeaway points

PepsiCo’s anti-ad campaign draws attention from multiple angles, including trademark law. It is unclear if it meets the criteria for “use as a trademark” since its duration might be temporary and used in conjunction with other uses of the same mark. This situation serves to illustrate that:

  1. To keep a trademark registration active, you must use it.
  2. If your trademark has been altered, you should apply for a new one and talk to your trademark attorney.
  3. Trademarks should be protected, sustained and used to ensure maximum brand recognition.
  4. Advertising initiatives should assess any potential advantages or disadvantages in relation to registered trademarks.