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Loss of Trademark Rights: Causes and Prevention Tips

Category: Trademark Information

Many people think that a trademark is nothing more than a symbol attached to a brand. Contrary to popular belief, a trademark isn’t just a logo. It can be a letter, a phrase, a sound, a photo, an aspect of packaging or a combination of those different aspects. Trademarks exist to give you exclusive rights to your intellectual property, making it easier for you to stop others from using it and profiting off your hard work. They also increase the value of your brand to potential customers and protect your business from infringement claims.

Is it possible to lose my trademark?

According to Trade Mark Law, you must use your trademark actively or else it can be removed on the grounds of non-use by an interested third party. This is to discourage traders from registering multiple trademarks for the sole reason of preventing others from using them.

Aside from lack of use or abandonment, here are two common ways that you can lose your trademark:

  • A trademark that’s too generic – An overly generic trademark is when the mark is no longer inherently distinctive and cannot be identified exclusively with the product or brand in question. A trademark’s distinctiveness allows consumers to identify the product’s source, as against generic terms that merely describe the product being sold. For instance, there are certain brand words that were not initially generic but lost their trademark when the general public began to use the trademarked words to describe the product or service, in general. Common examples include Band-Aid, Aspirin and Yo-Yo, which at some point all became synonymous with the product at large rather than the brand itself.
  • Infringement by another person or company – Trademark infringement is the reproduction or unauthorised use of a trademark. For instance, some clothing manufacturers attach brand labels to generic products and attempt to pass them off as authentic.

If someone else uses your trademark without your permission and you do not try to stop them, the courts may infer that you do not own the rights to the trademark. You lose the right to sue for that specific instance of trademark infringement.

What can I do to prevent the loss of my trademark rights?

The most effective way to prevent your trademark from becoming generic is to prevent any misuse of the trademark by competitors and to stay informed of the use of your trademark by others. The same goes for trademark infringement. This may include suing competitors who use your trademark to describe their products.   The onus is on the trademark owner to monitor its brand to enable you to take action where required.

If your trademark registration is about to expire, it’s important to renew that registration in a timely way. As previously mentioned in our article about trademark renewal, registered trademarks are only valid for 10 years in Australia. Renewing your trademark will keep your business protected under the law and prevent competitors from profiting off your hard work.

Protect Your Business with Pinnacle TMS

Businesses with registered trademarks need to protect their intellectual property from opportunists. Find out how Pinnacle TMS can help you with your trademark application, renewal and other trademark requirements by calling us on +61 2 9520 4366. You can also send an email to

As one of the leading trademark specialists in Australia, we take the headache out of protecting your trademarks and help you avoid brand name identity theft.

How Three Big Brands Lost Their Trademarks

Category: Trademark Information

To a world-famous brand, few things are more important than a trademark. Trademarking a name, symbol or logo identifies your ownership of your products and protects your intellectual property. But there are instances in which big companies can lose their bids to trademark iconic parts of their branding. Here are three such instances.

Adidas’ Three Stripe Symbol

Adidas is well-known for their slanted, three-striped logo. However, an EU court ruled on June 2019 that it was not “distinctive” enough. According to the ruling, Adidas did not “prove that the mark has acquired, throughout the territory of the EU, distinctive character following the use which had been made of it”.

The ruling is just the most recent update in a long-running trademark dispute between Adidas and Shoe Branding Europe BVBA, a Belgian company that features two slanted stripes on its shoes.

The dispute started in 2014, when Adidas was granted a trademark on “three parallel equidistant stripes of identical width, applied on the product in any direction” on their apparel. However, in 2016, Shoe Branding Europe BVBA applied to the EU Intellectual Property Office (EUIPO) for this trademark to be withdrawn. EUIPO annulled the 2014 trademark on the grounds that it was devoid of any distinctive character and should not have been registered in the first place.

This new ruling isn’t expected to affect Adidas that much, though. As Adidas has said in a statement, “This ruling is limited to this particular execution of the three-stripe mark and does not impact on the broad scope of protection that Adidas has on its well-known three-stripe mark in various forms in Europe”. Adidas can still appeal this decision.

Cadbury’s Purple Packaging

Since 1995, Cadbury has claimed the rights to the colour purple – particularly Pantone 2685C – but now, in 2019, following a long-running legal battle to protect the distinctive shade, its parent company Mondelēz International has given up its trademark.

The original 1995 application said, “The mark consists of the colour purple (Pantone 2685C) as shown on the form of the application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods.”

The 1995 trademark was only registered for “chocolate in bar and tablet form”, so, in 2004, when the company wanted their line of drinking chocolates, cakes and broader chocolate range to also use the colour purple, they applied for a new trademark. This new trademark used the same description as the 1995 one.

Nestle, their main competitor, opposed this application, arguing that the particular shade of purple had no distinctive character. The UK Court of Appeal agreed with Nestle and rejected Cadbury’s application in 2013. The Court’s decision hinged on the wording of the application, particularly the usage of the word “predominant”, which they felt was too broad.

After the decision, Cadbury realised that its existing 1995 UK registration became vulnerable to invalidation since it used the same wording as the 2004 application. They returned to court in 2018, appealing to remove the application’s second mark which used the term “predominant”. They lost the case since the Court refused to accept that Cadbury’s registration was for a series of two different marks.

This loss placed Cadbury’s trademark in an uncertain position. The company had two options: drop the trademark or apply for a fresh one. They decided to drop it. Still, they will continue to protect what they believe is a distinctive trademark, using unregistered rights.

KitKat’s Four-Finger Shape

Since 2002, KitKat maker Nestle has been trying to establish a European trademark for their four-finger shaped chocolate bar. Unfortunately, in 2018, the European Court of Justice in Luxembourg ruled that KitKat’s shape is not distinctive enough to be trademarked.

The court sided with the makers of Kvikk Lunsj, a Norwegian chocolate bar that is shaped almost exactly like the KitKat bar. Due to this, its maker, Mondelēz International, can market and sell the Kvikk Lunsj brand more widely throughout the EU. The chocolate bar first hit the shelves two years after the KitKat did in 1935.

This decision is the latest in the decade-long legal battle between Nestle and Mondelēz International, which began when, in 2006, Nestle managed to secure a trademark for KitKat’s shape. Kvikk Lunsj’s then-maker, Cadbury (now owned by Mondelēz International) challenged this trademark, and in 2016, Nestle was stripped of it. Nestle appealed this decision, but was rejected in 2018.

Nestle vows to keep fighting to secure their trademark. They plan to ask the appeals board to re-examine the evidence.

Big brands are not immune to issues with their trademarks. If you’re having problems with registering your trademarks, you can rely Pinnacle TMS to help. We are Australian trademark specialists. Book your today complimentary consultation to find out how we can assist you.

Bega and Kraft Battle Over Peanut Butter Packaging

Category: Trademark Information

A long-running legal battle over peanut butter jars has finally ended, with Australian food brand Bega Cheese prevailing over U.S. food giant Kraft Heinz. Bega Cheese now has exclusive rights to use the trademarked yellow label and lid with a blue or red peanut design, depending on the variant of peanut butter.

In a statement to the ASX (Australian Securities Exchange), Bega Cheese said that it was pleased with the decision, which ruled that Kraft Heinz’s use of similar-looking packaging is misleading or deceptive under Australian law.

“We look forward to continuing to produce and supply our customers with our much-loved peanut butter products,” the statement further said. However, the matter’s not over yet, with the court having to determine further orders and damages at a later date. Even so, the whole affair took almost 18 months to resolve. How did this peanut butter battle begin, in the first place?

Origins of the Legal Battle

Back in 2012, Australia’s Kraft peanut butter was owned by the U.S. food company Kraft. When the company split in two, it transferred its Australian operations to a new firm called Mondelez International.

In 2017, Australian-owned Bega bought most of Mondelez International’s Australia and New Zealand grocery and cheese business. The acquisition cost the Australian brand $460 million and consisted of ownership of Kraft-branded products, such as cheeses, mayonnaise, Vegemite and, yes, peanut butter. This included recipes and trade dress (an important identifier of a product, operating like a trademark).

Since the Kraft name wasn’t part of the acquisition, Bega Cheese simply replaced it with their own on the distinctive yellow jars. They also ran ads where they stated that “Kraft peanut butter is now Bega peanut butter” and “Never oily, never dry, with the same taste you’ve always loved and now is Aussie owned by Bega.”

This didn’t sit right with Kraft – now Kraft Heinz – who wanted to return to the Australian market and use their famous yellow jars exclusively. In 2017, they took Bega Cheese to court on trademark infringement allegations, first in New York then in Australia, arguing that the peanut butter trade dress wasn’t part of the acquisition.

Kraft alleged that Bega’s usage of the unique yellow jars was a “deliberate effort to trade off the goodwill of the Kraft brand, cause consumer confusion and irreparably harm the value of Kraft’s intellectual property”. They demanded that Bega drop the famous packaging – but Bega maintained that it now owns the brand’s intellectual property. They filed a crossclaim against Kraft over their re-entry into the peanut butter market.

While the cases were going on, Kraft cooked up a brand-new peanut butter formulation and, in 2018, began selling it in almost identical yellow-labelled jars. At the same time, Bega simply continued producing the original Kraft “never oily, never dry” recipe under the name Bega peanut butter.

Before the decision was made, both brands had the same look. Now, though, Kraft Heinz will have to redesign their peanut butter jars, since the court ruled that Bega Cheese acquired “all rights” to the peanut butter trade dress when it acquired Mondelez International. They had bought the trade dress fairly and squarely.

As a result, Bega Cheese is now exclusively entitled to the rights of “a jar with a yellow lid and a yellow label with a blue or red peanut device, with the jar having a brown appearance when filled.” Meanwhile, Kraft Heinz is “disappointed” and “considering its options.”

Are you looking to trademark something? Let Pinnacle TMS help. We are Australian trademark specialists who will keep your business brand safe from trademark infringements and more. Get in touch with us today and get a phone call consultation.

Four Celebrity Couples Who Tried to Trademark Their Children’s Names

Category: Trademark Information

What’s in a name? Apparently, according to these famous celebrities, a clothing line, toys, footwear, and other merchandising ventures. Trademarking names isn’t new in Hollywood – Beyoncé, Taylor Swift, Rihanna, Justin Bieber, Bruce Springsteen, Katy Perry, and Kylie Jenner, among many others, have already successfully trademarked their own monikers as brands. Now, some of them are seeking the same treatment for their equally famous children. Here are just four celebrity couples who tried to trademark their offspring’s unique names.

Beyoncé and Jay-Z

In 2012, when Blue Ivy Carter was born, the baby girl’s power-couple parents attempted to trademark her name. As Jay-Z told Vanity Fair in 2013, the reason for this is so others couldn’t exploit it. “People wanted to make products based on our child’s name, and you don’t want anybody trying to benefit off your baby’s name,” he said. Alas, they were thwarted by Veronica Alexandra of Boston’s Blue Ivy Events, who filed her own trademark request. The U.S. Patent and Trademark Office sided with the wedding planner since she had been operating since 2009, and the Carters walked away empty-handed (that time).

They tried again in 2016, this time to register Blue Ivy’s full name. In 2017, Bey and Jay also moved to trademark the names of their newborn twins, Sir and Rumi. Whether they’re successful this time is still up in the air.

Cardi B and Offset

On July 10, 2018, rappers Cardi B and Offset welcomed their first child, Kulture Kiari Cephus, into the world. Less than a month later they filed an application and it appears that they successfully registered her name for a number of trading rights, including merchandising for a clothing line and footwear, as well as musical recordings, motion pictures, entertainment marketing services, online video games, dance events, and fanclubs.

DJ Khaled and Nicole Tuck

“He’s the youngest, biggest mogul out there right now,” DJ Khaled said of his son, Asahd Khaled, during a 2017 interview with NME. Perhaps that’s why the rapper is seeking to trademark his son’s name. The trademark reportedly covers an array of enterprises, from jewelry and snack food to toy cars (the ones that children can drive) and toothpaste.

DJ Khaled didn’t stop there, though – in 2018, he filed a lawsuit against Business Moves Consulting and its boss Curtis Bordenave because they want to trademark the names “Asahd”, “Asahd Couture”, and “A.S.A.H.D A Son And His Dad”. The results of the lawsuit are still uncertain.

The Kardashian-Jenners

This famous family has filed several trademarks, from Khloé Kardashian’s “Koko Kollection” to Kourtney Kardashian’s “Kourt.” Now, the Kardashian-Jenner sisters – namely Kim, Khloé and Kylie – are moving to trademark their children’s names as well. Saint, North, and Chicago West, True Thompson, and Stormi Webster can expect their names to appear on a variety of products, including toys, skincare products, and even a clothing line. Stormi, in particular, can also make use of “Stormiworld,” which her famous mother aimed to trademark as well.

Trademarking children’s names is a celebrity practice that doesn’t seem to be going away anytime soon. As we can see, the motives behind doing so are twofold: first reason, of course, is for branding – which ultimately is a financial motivation. When a name is registered, the name-owner can cash in through licensing. The second reason has more to do with privacy – registering a name means that a third party cannot use it for business and therefore cannot profit from it.

If you’re looking to trademark something, be it your own child’s name or your business name, you can turn to Pinnacle TMS. We are trademark specialists who will do all we can to protect your brand. Contact us today for a consultation. We look forward to hearing from you.

Addressing the Challenges in Business Rebranding

Category: Trademark Information

Every business relies on a distinct logo and words that signify their identity and the products/services they offer. A business’ logo and tagline are vital because they are what customers associate with the brand. Sometimes, though, preferences evolve, and you may want to consider rebranding.

A fresh image, especially for a business that’s transitioning into the digital world, is all well and good, especially if you aren’t doing so well and need new audiences. A new look, one that’s well-designed, executed and marketed may be the key to attracting new clients.

However, branding doesn’t happen in a snap. In fact, there are many ramifications that come with rebranding your business, so you must be prepared for them.

Trademark Search

Perhaps your rebranding involves a completely new business name. Of course, it’s only good practice to trademark your business name and logo.  A trademark protects the identity of your goods and services and prevents others from imitating your brand.

But what if the new name you chose has already been used and trademarked by another business operating in the same industry as you? That could spell trouble for your business. Before going through with rebranding, make sure you have the right to use the name you chose.

While you can simply check the Australian Trademarks Search System (or similar database in other countries) to make sure the exact brand name you want to use is available.   But if you intend spending significant time, money and energy into the new brand, you should have a Trademark Specialist confirm the new brand is available for you to use and register.   If your new brand name checks out, trademark everything you can afford to trademark: your business name, the name of your products, your slogan, even your own name used for business purposes. Ultimately, it costs less to trademark your brand than to lose everything related to your business.

Logo Protection

Along with changing your brand name, you’re likely to change or refresh the company’s logo as well. One of the things you should consider is the ownership of copyright. If you hired a team or a person outside your own company to design your logo, the copyright is technically theirs.

It is critical to make sure you have a contract between the company and the outsourced designers, which states that the ownership in copyright is yours. Afterwards, don’t forget to trademark the logo to ensure that no other business/competitor can use it.

Domain Name Availability

E-commerce and internet usage continue to be more popular among Australians and globally. According to The Australian Post, online shopping in the country reached eight per cent of total traditional retail sales in 2017. Additionally, about 20.7 million of Australia’s 24.3 million population in 2016 are internet users.

Because of the continuous growth of internet usage and online shopping, businesses must catch up by establishing their online presence with a website. As part of your rebranding, you may just now be creating your own site. Be mindful of this process, though. You first need to check if the domain name you’re interested in is available.

The Internet Corporation for Assigned Names and Numbers (ICANN) is the organisation responsible for organising and maintaining databases of domain names. With many variations of domain names available, such as, and, it’s only good practice to conduct domain name searches to make sure your domain name is distinct from your competitor’s.

The decision to rebrand is not easy, but not impossible either. Sometimes, it’s even necessary. Although various processes are involved, especially when it comes to trademarks, you don’t need to worry.

Let Pinnacle TMS® help you with your trademark needs. We are Trademark Specialists who understand how challenging and confusing, but extremely important, trademarking your business is.

Visit Pinnacle TMS® or call us on 02 9520 4366 to start the process of protecting your business today.