While it can be good strategy to cover your trade mark for a range of goods, coverage of too many goods can make you vulnerable to a non-use action. A recent NZ case Bayerische Motoren Werke AG (“BMW”) v Electracom Pty. Ltd. (“Electracom”) is a cautionary tale about why one should not claim too many goods under a trade mark.
BMW kicked off the opposition when it challenged Electracom’s accepted NZ Trade Mark Application No. 1,096,199 for the following logo:
BMW asserted that Electracom’s logo was too similar in appearance to its plain BMW logo:
In response to BMW’s opposition, Electracom argued that BMW’s plain logo trade mark had not been used for many of the goods it was covered under. It filed for a revocation of some but not all of the goods covered under this BMW trade mark.
Evidence of Use or Non-Use?
In response to Electracom’s opposition, BMW failed to provide evidence of use of the plain logo trade mark for the goods in question. However, it did include evidence of use for their well-known “BMW” and logo trade mark:
It soon became evident that there had been insufficient use of the goods for which Electracom was seeking revocation. However, according to section 7(3) of the New Zealand Trade Mark Act 2002, it was ruled that the logo without the “BMW” was considered a component of the logo containing the “BMW”. Use of the logo containing the “BMW” was therefore also use of the logo without the “BMW”.
This provided a rationale for BMW’s plain logo trade mark to avoid revocation of all the goods sought by Electracom. But Electracom did nonetheless enjoy a win. It was decided there should be a “partial revocation” of the goods in question.
What Does This Mean For Your IP?
This shows that it is important to find a balance between only claiming goods you will use, as well as goods that need to be included as a pre-emptive measure to discourage competitors using your trade mark. But your trade mark becomes vulnerable to non-use if you claim too many non-essential goods that you never intend(ed) to use under the trade mark.
We provide such advice at the time of filing your trade mark. If you are concerned that your trade mark may be vulnerable to non-use, contact us for further guidance.
For the full report of this case, see here.
