Dead trademarks can still carry significant legal and commercial risks. Excel V. Dyquiangco explores the pitfalls and legal considerations involved in reviving abandoned trademarks.

Trademarks are supposed to be active, recognized and protected. But there are instances when these quietly fell off the register and become what practitioners often call “dead” trademarks, which generally refers to a mark that is no longer protected under trademark law. This can happen for several reasons: non-renewal, non-use or legal changes.

“Trademarks usually lose their protection either because of administrative paperwork failures or a desire to quit,” said Rajiv Suri, a senior associate at Alsuwaidi & Company in Dubai. “The first scenario may involve instances where an applicant fails to respond to an Office Action – a letter from an official examining authority seeking compliance with certain requisitions or objecting to registering the mark on legal grounds – within the required timeframe, or for Intent-to-Use registration, failure to file a statement of use (SOU) in jurisdictions that require the owner to file such a statement. The other reason could be non-renewal of registered trademarks or non-prosecution of an application for a desire to quit.”

He continued: “On the other hand, if the owner negligently fails to renew the registration within the stipulated timeframe (usually every 10 years in most jurisdictions, including the UAE), it can lead to losing statutory protection, and this is especially crucial where the judicial system follows civil law as opposed to common law. Then there is also the risk of the trademark becoming generic for a certain set of goods, common examples being Aspirin, Thermos, Escalator, Zipper, Baggies, Trampoline or Xerox.”

Audrey Lim, a partner at Bird & Bird in Singapore, added: “The applicant did not respond in time to objections raised by the trademark office during the application process; the trademark owner did not renew the trademark before it expired; voluntary withdrawal or cancellation of a pending or registered trademark by a trademark owner.”

She said that a third party successfully applied to cancel the trademark because the owner had not used it for five years or more, or that this same party had successfully challenged the trademark on the basis that it should not have been registered in the first place.

Using a dead trademark

But can an entrepreneur or a business owner revive a dead trademark? They can, as Stephen Stern, a partner at Corrs Chambers Westgarth in Melbourne, shared, but there should be caution. “Care must be taken to clarify what rights might still subsist in the original owner of the mark,” he said. “A registered mark is valid until it is cancelled – so even if it is vulnerable to cancellation, until it is cancelled, the owner’s rights in the mark persist. Additionally, in adopting an unused or abandoned mark, it is important to ascertain whether another third party has begun using the unused or abandoned mark, both via the register and via common law, unregistered use.”

He added: “Equally important, it is possible that even if a registration has lapsed or been cancelled, the original owner may still have a reputation in the mark on which that owner can rely to stop any adoption or use of the mark, which is the subject of the expired registration.” 

In Myanmar, the possibility of reviving a dead trademark depends on the circumstances surrounding the loss of protection. “If a trademark has expired due to failure to renew, it may be reinstated within six months by submitting a late renewal application and paying the applicable fees. Beyond this grace period, revival is not permitted,” said Yuwadee Thean-ngarm, a partner and director at Tilleke & Gibbins in Yangon.

“For pending applications that have been withdrawn or abandoned for procedural reasons, reinstatement may be achieved within 60 days upon submission of the appropriate form and payment of the required fees,” she said. “Trademarks cancelled or revoked due to non-use, invalidity, bad faith or following a final refusal are not eligible for revival; a new application must be lodged and will be subject to a fresh examination. In summary, revival is strictly limited to lapsed renewals within the designated grace period and certain categories of pending applications.”

According to Vrinda Harmilapi, an associate at Chadha & Chadha in New Delhi, the revival of a dead trademark depends entirely on why and how the mark became dead, and how much time has passed.

“The most straightforward route to revival is restoration under Section 25(4) of the act, which applies where a mark has lapsed due to non-renewal,” she said. “The proprietor can apply for restoration within one year of the date of expiry, along with the prescribed restoration and renewal fees. During this window, the mark exists in a state of legal limbo, removed, but not irretrievable. Once that one-year window closes, restoration under Section 25(4) is no longer available, and the proprietor would have to file a fresh application, starting the process from scratch.”

Adoption of a trademark

According to Nathapong Tongkaew, a partner at Domnern Somgiat & Boonma in Bangkok, if the registration is cancelled, use of the same mark by another business would not constitute infringement against a registered mark.

“However, the owner may still rely on the grounds of passing off. In this case, the owner will have to prove that its mark is famous, and the other party uses the mark in bad faith to misrepresent the goods or services. The registrant may also act under the copyright law if the trademark can be considered as a copyrighted work like a device mark,” he said.  

Khin Myo Myo Aye, a senior associate at Tilleke & Gibbins in Yangon, said that when considering the adoption of a trademark that has lapsed or is considered “dead,” it is imperative for businesses to conduct thorough due diligence.

“They must verify the absence of conflicting prior rights, including earlier registered or well-known marks and any ongoing usage that could result in passing-off or unfair competition claims. Legal entitlement to use such a trademark is not inherently granted; recent changes in status may attract increased scrutiny from examiners and competitors. Meticulous clearance and evaluation of any residual rights are crucial prior to adopting or registering a dead trademark,” she said.

“Even if a trademark owner loses its registration, it may still have certain rights based on its past or ongoing use of the mark,” said Lim, adding that these rights may allow the owner to stop others from using the mark in the following ways:

• Passing Off: Even without a registration, a trademark owner may still have built up a reputation (known as “goodwill”) in Singapore – for example, if the owner continues to operate a business in Singapore after its registration lapses. In such cases, the mark still serves to identify the owner’s business. If a third party tries to use the same mark in a way that misleads consumers into thinking they are connected to the original owner, the owner may be able to take legal action for “passing off.”
• “Well-known” trademarks: If the dead trademark is considered well-known in Singapore, a third party who uses it without the owner’s permission may still face legal action for trademark infringement. This applies even if the mark is not registered in Singapore and even if the owner does not carry on business here. The threshold for a mark to qualify as “well-known” is high – the mark must be widely recognized among the relevant public in Singapore. To illustrate, marks such as Gucci have met this standard, reflecting the level of widespread recognition and reputation required.

“If no one else holds a registration for the mark or is actively using it, other businesses are generally free to start using it,” said Lim. “That said, it is important to carry out thorough checks for any past or current use of the mark before adopting it to reduce the risk of legal disputes. Where possible, the safest approach is to get written permission (a licence) from the original mark owner before starting to use the mark.”

Best practices for businesses

Before companies re-register a dead trademark, it is important to do due diligence. Passara Thammashotworn, a senior associate at Domnern Somgiat & Boonma in Bangkok, said: “Once the registration is cancelled, the same or similar mark may be registered by a third party. Such registration (if any) would be an obstacle to use and refile of the mark. It is prudent to conduct a clearance search (identical, full availability and common-law searches) in order to ensure availability for use and registration before using or reviving a trademark.”

Suri added that before companies try to “resurrect” or use a dead trademark, it is advisable to check the prosecution history of the mark by checking the official records.

“Try to see or find out the reason for its ‘death,’ whether there was any refusal issued because it was the same or like another living brand,” he said. “Further, just because the registration expired doesn’t mean that there may not be any market presence of the mark. Therefore, it is also advisable to search Google, social media, the company register or records and trade directories to look for the presence of such a mark. For instance, in the case of pharma products, it would still be recommended to check pharma directories in addition to search engines. If they are still selling products using the dead trademark, they still own the common law rights in it, but only in jurisdictions that recognize such rights. In other words, if you use a famous dead mark (like a defunct soda brand) to trick people into thinking the old company is back, you can be sued for unfair competition or passing off. Therefore, the bottom line is that if you see a dead trademark you love, treat it like a ‘Proceed with caution’ sign, not a green light.”

Stern also cautioned that risks may remain even after a trademark appears abandoned. “The risks are that there may still be lingering reputation rights of the original owner attached to the mark, such that an infringement action could still be brought against an adoptee of the mark,” he said. “To mitigate this risk, thorough searches of the internet to uncover any ongoing use or use by a new adoptee of the mark need to be carried out.  In addition, searches of all relevant registers (such as the trademarks register (of course), the companies register, business names register, Australian Business Numbers register and so forth) should be conducted prior to the adoption of a seemingly unused or abandoned mark.”

He said that industry-specific registers, journals and other publications should also be consulted. “For example, one of my clients had not registered his vineyard name as a business name or company name, but was actively trading under it for many years. The vineyard name was not used online, but the client was still advertising in a trade journal in the wine sector, which listed every vineyard in each Australian State. This client made an active choice to have his vineyard name included in this journal, which was sufficient as evidence of his use of the unregistered mark as well as the reputation attached to it, such that another company that tried to use the same name was rebuffed. While this journal may seem niche to someone unfamiliar with the field, it would have been known to experienced traders in the wine industry. This example goes to demonstrate that if you lack the industry-specific knowledge to know what registers and publications to consult, it is advisable to consult someone who has this knowledge. The most thorough searches possible should be conducted to check the status of a seemingly unused trademark before it is adopted,” he said.

Harmilapi added that a detailed review of the Trademarks Registry’s database is essential, confirming the legal status of the mark, its validity and renewal history, whether it falls within the one-year restoration window, and whether any identical or similar marks exist on the register.

“It is important to understand the complete lifecycle and history of the mark before considering adoption,” she said. “Equally important is checking for any pending litigation or disputes. A mark may be off the Register but still entangled in proceedings, something that any business looking to adopt the mark should be aware of from the outset. Beyond the Registry, a market investigation is indispensable. One must assess whether the mark has in fact fallen out of use or whether residual goodwill continues to exist. This includes examining domain name ownership, online marketplaces, social media presence, and even regional or niche usage that may not be immediately apparent.”

“It is also advisable to identify whether any distributors, licensees or associated entities continue to operate under the mark in any capacity,” Harmilapi added. “A review of past enforcement history is equally telling. While reviving or adopting a dead trademark can offer commercial advantages, particularly where legacy value or consumer recall exists, these benefits can only be realized when the exercise is undertaken with a thorough legal and factual assessment. Without such diligence, the risks of future disputes, including passing-off claims, remain significant.”