The Federal Court has ordered the partial cancellation of registrations for some trademarks containing the word Dunlop on the basis that, through the registered owner’s (Goodyear’s) failure to properly control Dunlop’s use of the marks, they allowed Dunlop (as a foreign supplier) to develop an independent reputation in those marks in the Australian marketplace?to such an extent that the marks came to signify the foreign supplier and not the trade mark owner.
This case highlights that even the most distinctive registered trade mark may become vulnerable to cancellation if the trade mark owner allows it to be used in such a way as it comes to signify the goods/services of third parties.
Trade mark owners should therefore take appropriate brand protection steps, such as appropriate licensing arrangements with suppliers (including clear recognition of the trade mark owner on the supplied goods) and enforcement.
Further, the case highlights that counterclaiming for cancellation of a trademark is an effective strategy when facing an infringement action.
Anyone who may be using your business name or Intellectual Property as part of their services should seek legal advice.