Page 51 - IP-HANDBOOK-07-2018

IV. Defending our IP assets
Our brands are a centerpiece of our business. Caring for them is part of Lindt’s DNA. The registration of a trademark is not suf cient to keep its validity. Unlike other IP rights, such as patents, copyrights or indus- trial designs, a trademark needs to be actively and properly used in each country to avoid their loss.
• How to use a trademark?
TIMING
Most countries grant the trademark owner a grace period up to 5 years to get prepared to use the trade- mark. During this period if the trademark is not used a third party cannot challenge it for non-use. After this
simple trademark use rules you help strengthening the trademark rights:
A. Proper Use
1. Use the trademark as an adjective not as a noun:
RIGHT: My favourites are LINDOR truf es
WRONG: My favourite is LINDOR
2 . Do not modify the trademark changing it to the plural form:
B. Consistent Use
Using the trademark in a consistent manner contri- butes to building brand recognition. The more the tra- demark is recognized by consumers the easier it is to defend it against infringers.
C. Differentiate or emphasize trademarks in a text
In communications, the trademark has to stand out by emphasizing it, e.g. using in capital letters, italici- zing, or using “quotation marks”.
D. Reviewing adequate registration
TRADEMARK USE
period the use needs to start to avoid that a third party requests cancellation. Trademark rights are territorial. With some exceptions use needs to take place in each country where registered.
FORMS OF USE
The form of use is another important factor for the validity of the trademarks. They need to be used in the course of trade as they are registered. Misusing the trademark puts its validity at risk. In the extreme the trademark may become a generic word when consumers use it as a synonym for the product itself. WALKMAN used to be a trademark but became a synonym for a portable music player. By following
RIGHT: GOLD BUNNY mini gures WRONG: Mini GOLD BUNNIES
3. Do not use possessive form:
RIGHT: The LINDT Maître Chocolatiers WRONG: LINDT’S Maître Chocolatiers
4. Don’t translate trademarks – use as registered
e.g. EXCELLENCE and not “EXCELENCIA” in Spanish
If at some stage changes are made to the branding make sure that the respective trademarks are still co- vered by a registration. Consult Group Legal & IP to assess if new registrations need to be prepared.
E. Evidencing use
The evidence of trademark use can play a crucial role when defending the trademark. Collecting use mate- rials with the date and the place when the use took place should be integrated into your business pro- cesses.
Follow the «Proper Trademark Usage» guidelines in the Corporate Design Guidelines.
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