Records Retention
It is important for the brand owner and trademark counsel to have retained records available concerning the brand name's history, including the identity of the owner, the date of first use together with dated examples of product packaging and advertisements showing actual use. These records should be retained in a systematic fashion for the life of the brand.
These records can be extremely valuable in the context of oppositions, section 45 proceedings or trademark litigation. The initial designs of labels and packaging can help establish claims for copyright relating to such works. In addition, such evidence can show the extent to which the brand name has become known which will in turn affect the brand owner's ability to protect it.
Retained records should include the following representative, dated material relating to the branded goods or services:
a) labels;
b) bills of lading and other shipping documents;
c) invoices;
d) advertisements;
e) point of sale signage;
f) computer control labels;
g) catalogues;
h) invoices and other bills relating to the preparation and reproduction of labels; and
i) other materials displaying the brand name.
Such material together with sales figures can provide the basic evidence required in a trademark opposition, an action for infringement or to show trademark use in a section 45 proceeding.
Demand letters and actions taken to preclude third parties from using confusingly similar trademarks or trade names or otherwise misusing the brand owner's intellectual property should also be retained. This type of material can provide evidence that the brand owner has diligently protected its rights.
This type of record keeping will be particularly important where a trademark has been assigned since the trademark must become distinctive of the new owner after the assignment. In such cases the new owner must engage in a program to bring to the attention of the relevant portion of the public that it is the owner of the mark and the source of the goods or services. If the new owner maintains appropriate records, they will help show that this has in fact occurred. Records retention is also important if the trademarks have been licensed.
