26 October 2026
Registering a trade mark is an important step in protecting a brand. However, registration is not necessarily permanent protection for every good or service listed in the application.
A series of recent Australian and New Zealand trade mark decisions provides a useful reminder that trade mark owners need to be able to show genuine use of their marks, and that the way a brand is actually used matters.
Selling products is not necessarily providing retail services
In a recent Australian decision involving the SHELTA trade mark, the owner had evidence of use of the mark in connection with outdoor umbrellas and furniture.
The problem was that the registration also covered certain retail and wholesale services.
The evidence showed that retailers were offering the retail services. Supplying goods to retailers did not, by itself, establish that the trade mark owner was providing wholesale services under the mark.
The registration was therefore amended to remove the unsupported class 35 services.
This distinction is easy to overlook.
A business may use a brand extensively on products without necessarily using that brand as a trade mark for separate retail or wholesale services.
Has your logo changed?
Another recent Australian decision concerned an ISO device mark used for electrical products.
The owner had also used the word ISO by itself. However, that was not considered use of the registered device mark because an important graphical element of the registered mark was missing.
Use was established for some goods, but the registration was substantially narrowed.
A similar issue arose in New Zealand in a dispute involving a series of ZIP trade marks.
The business had evolved its logo over time. The newer ZIP logo was considered sufficiently different from an older registered logo that use of the newer branding did not preserve the older registration. The old logo registrations were revoked, while other ZIP registrations remained with narrower specifications reflecting the use that could actually be established.
Registration is not the end of the process
These cases highlight a practical issue for established businesses.
Brands evolve. Logos are redesigned. Product ranges expand or contract. Businesses change the way they sell and distribute their products.
The trade mark register does not automatically change with them.
A registration obtained several years ago may no longer accurately reflect the brand the business is using today.
That can become important when another party applies to remove a registration for non-use, or when the owner needs to rely on the registration against someone else.
A useful trade mark portfolio check
Businesses should periodically compare their trade mark registrations with:
the marks and logos they actually use;
the goods and services they currently sell;
the way those goods and services are marketed; and
any significant changes made to the brand since registration.
Where there is a material gap, it may be worth considering a new application rather than assuming an older registration will continue to provide the protection intended.
IP Solved assists businesses with trade mark portfolio reviews, new applications and strategies for maintaining protection as brands and businesses evolve. Contact us if you would like us to review whether your existing registrations still match the way your brand is being used.
