What are Zombie Trademarks ?

Zombie Trademarks or “Dead” trademarks may still give the original owner the right to prevent someone else from bringing their trademark back to life.

What are Zombie Trademarks?

Unlike patents and copyright, exclusive trademark rights can survive indefinitely as long as the trademark is in use, renewed every 10 years and does not become generic. Under the Australian Trade Marks Act, a trademark is considered to have been abandoned where it has not been used for a continuous period of three years and application is made to remove it from the trademarks register. If a trademark is not renewed, it is considered to be “dead” and the owner’s exclusive trademark rights cease. Once this happens, it is theoretically possible for someone else to register the trademark and use it themselves; effectively “resurrecting” the trademark. While such registrations can be made in good faith, they can also be registered with the intent to sell the mark back to the rightful owner for a profit or to trade on the goodwill of original owner’s mark.

Dealing with Zombie Trademarks

Each jurisdiction has a different way of dealing with bad faith or “zombie” trademark registrations. Zombie Trademarks can effectively be dealt with in Australia at the examination stage or through the opposition provisions of the Trade Marks Act 1995 (Cth), according to IP Australia. IP Australia states that zombie trademarks are not a significant problem in Australia, but are not uncommon in the trademark world. In the U.S, evidence of residual goodwill can be used to rebut the presumption that a trademark has been abandoned to defeat a zombie trademark registration. That means that where a defunct brand is still associated in the minds of consumers with its original owner, it may still give rise to the original owner’s right to oppose other people deliberately trying to exploit the residual goodwill in their dead trademarks.

Key Takeaway

Owners of trademarks, especially those with substantial reputations, need to carefully consider the potential consequences of allowing a trademark to lapse, especially where they may wish to revive the mark later down the track.

Cooper Mills offers both Trademark Opposition and Trademark Litigation services.