Does not using a trade mark ever equate to use?

Without the correct continued use and maintenance of a registered trade mark, the registration is left vulnerable to an attack by third parties to remove it from the register.

In an interesting marketing ploy seeking to appeal to Millennials, PepsiCo has removed reference to its DORITOS mark from promotions in its recent “anti-ad” or “no logo” campaign. Instead, it has inserted the words “LOGO GOES HERE” and promoted the sale of special edition “brandless” plain packaging versions of its product.

Whether or not this is an optimal advertising strategy is one thing (discussed at length by Millennial bloggers) but this article considers whether campaigns, such as PepsiCo’s anti-ad campaign, are likely to have negative impacts on the enforceability and maintenance of the entity’s registered trade mark rights in Australia. In particular, if this type of “use” as part of a promotional campaign will be viewed as “use as a trade mark”, and whether it will be enough to defend the threat of a non-use action.

What is “use as a trade mark”?

In short, “use as a trade mark” is use of the mark as a “badge of origin”. It draws a connection between the goods or services and the person or entity that applies the mark to such goods or services.

There are many different ways that a trade mark can be used or exploited. In fact, there are no standard rules or requirements defining such “use” – it will largely depend on the product, target market and industry, as well as various other factors. Some of the more common uses typically employed include trade marks displayed and used on invoices, packaging, swing-tags, advertising, websites and printed on the product itself. The use of a trade mark will usually tie in to a company’s marketing or business strategy.

So, what happens if, like PepsiCo in its anti-ad campaign, the owner intentionally hides and ceases use of its trade mark as part of its marketing and business strategy? Can this actually strengthen the connection made by consumers between the brand (trade mark) and the goods? Is this still “use as a trade mark”?

This question has not been tested by the Australian courts to date and the answer is not clear.

What if the trade mark is well known?

There is no doubt that there are certain brands that are globally known and universally recognised such as Google, Apple, Coca Cola and Facebook. These iconic brands are arguably so well known that you don’t need to be told or see what the mark is in order to be able to identify it. Just being aware of one element of the mark, some indicia or closely related matter can be enough to bring the mark to mind.

For universally well known brands, such as those identified above, one could conceivably mount an argument that it is not necessary for the owner to show actual use of a registered mark if it is able to establish use which is indicative of the mark or in some other way promotes the mark. But how well known must the brand be, and how many elements which form part of the mark need to be identifiable to bring the mark to mind? These considerations really bring to light the power of a strong trade mark when set against the science of consumer psychology.

The other way to look at it is, whether or not a mark is well known, PepsiCo’s anti-ad campaign is actually not using the trade mark. It may be alluding to the mark in a roundabout way, but it is not using the mark as a trade mark.

The 2010 Australian Trade Mark office decision concerning Red Bull GmbH’s application for the stylised RED logo may provide some guidance. In that case, Red Bull GmbH tried to rely on use of its RED BULL (stylized) mark to establish that the wide-spread use and recognition of the mark was enough to establish that the stylised RED logo mark was adapted to distinguish. The delegate refused the registration on the basis that the evidence filed did not show that the “sign applied for has been used as a trade mark that is capable of doing the job of distinguishing the applicant’s goods, and that it will serve as a badge of origin for those goods.”¹ The stylized RED logo later went on to achieve registration relying on other circumstances.

It seems that in circumstances such as PepsiCo’s anti-ad campaign, it is likely that an owner claiming “use as a trade mark” may be heavily reliant on the discretion of the IPA registrar or the courts. The Red Bull case also suggests that the quality of the evidence filed is crucial and use of the mark as applied is necessary.

Key takeaways

The anti-ad campaign by PepsiCo is an interesting one from many angles – not least from a trade mark perspective. Whether such a campaign will satisfy the requirement of being “use as a trade mark” may never be decided as such campaigns may be short-lived or used in conjunction with ongoing use of the mark, such that the mark is not unused for the requisite period to support a claim of non-use. The circumstances do, however, reinforce the following:

• If you want to maintain a trade mark registration, you need to use it.
• If you have changed your trade mark, you should consider applying for a new one and discuss with your attorney.
• Trade marks will always be at the pinnacle of brand recognition and should be protected, maintained and enforced.
• It is important for marketing campaigns to consider possible benefits to or adverse effects on registered trade marks.