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14 May 2019

Diamonds are forever and trade mark registrations can be too!

Trade marks registrations can be renewed into eternity as long as their owners don’t forget to pay by the renewal deadlines.

The first ever mark on the UK trade mark register, filed on 1 January 1876, was an oval shape containing the words BASS & CO PALE ALE and a triangle. Later that month an application was filed to register that same triangle alone and coloured red. Over one hundred and forty years later, those trade mark registrations are still alive. The Bass red triangle managed to make further history by appearing, via two bottles on the bar, in Édouard Manet’s final masterpiece, A Bar at the Folies-Bergère, first exhibited the year before Manet’s death in 1883. The painting today hangs in the Courtauld Institute in London.

These two UK trade mark registrations are still alive because official renewal fees have been paid for over a hundred years to maintain them. Careful management of renewal dates is key to the management of an IP portfolio since, if a final deadline for paying a renewal fees is missed, the registration authorities rarely entertain excuses and the registration is lost forever. The other key to maintaining trade mark registrations is to ensure that the marks are used in the countries concerned. A few trade mark registries (such as the US and Mexican Registries) require a trade mark owner to regularly file evidence of use to keep its trade mark registration alive. The majority of other registries don’t impose that burden. However, once a registration reaches a certain age, it is open to a third party to apply to cancel it on the basis that it has not been used on the goods for which it has been registered. If the trade mark owner cannot demonstrate use to defend the cancellation application, the registration gets cancelled – a case of use-it-or lose-it. Based on the images of the Bass ale products on sale in the UK, Bass does not appear to be in the danger zone.

If you would like us to manage the renewal of your trade mark registrations, advise on the evidence you should be keeping to be able to demonstrate use of your trade marks or have any other trade mark questions contact us at trademarks@vennershipley.co.uk.

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