February 21, 2025

“Once the cat is out of the bag”: key considerations for the AS EVER trade mark in Australia and New Zealand”

Authors

“The cat is out of the bag”, says Meghan, the Duchess of Sussex, who recently announced the rebranding of her business ‘American Riviera Orchard’ to “As Ever”, before any products are available for sale. Meghan explained the rebranding, saying the original name limited her to “things that were just manufactured and grown in this area.”

The US trade mark applications for American Riviera Orchard (ARO) faced more issues than this, including being deemed by the United States Patents and Trademark Office (USPTO) to be primarily geographically descriptive, having an overly broad identification of goods, issues with international classification of goods, and lacking proper verification due to the absence of a signature. In October 2024, a letter of protest was filed, claiming a likelihood of confusion with existing registrations for ROYAL RIVIERA.

No wonder the change of heart. The question is whether it will be smooth sailing for AS EVER. Applicant 2022 Trade Marks LLC filed trade mark applications for AS EVER (standard characters and in stylised font) (AS EVER Marks) the logo mark described as an eight-sided design featuring a palm tree flanked with two birds (Logo Marks) with the USPTO in September 2024, which are under examination.

However, the USPTO trade marks register lists similar marks like CLEVER AS EVER, AS EVER PHOTOGRAPHY, SOUND AS EVER and B.A.E., BEAUTIFUL AS EVER, which could lead to further protest letters. Additionally, As Ever NYC, a New York clothing company has used AS EVER as an unregistered trade mark since 2017, raising potential prior common law rights to the mark. The applications cover a vast range of goods, which may again cause issues with the USPTO, although it’s expected they have been signed this time.

The Logo Marks have also encountered setbacks, with the mayor of Porreres, Majorca, raising concerns over similarities to the town’s historic coat of arms and requesting cessation of use. These hurdles highlight the challenges in building a distinctive global brand (especially with a high-profile figurehead), the importance of due diligence when choosing a trade mark, and the risks of publicising the brand before obtaining registered rights.

In Australia and New Zealand, 2022 TRADEMARKS LLC has filed applications for the AS EVER Marks and Logo Marks. The Australian applications are accepted but in the opposition period, while the New Zealand applications are under examination. As example, the AS EVER Marks applied for cover a total of 30 classes of extremely varied goods and services, including alcoholic beverages, meditation cushions, wallpaper, matchboxes, sand (for decorative purposes), trellises, hospitality services, gardening tools and furniture. It appears AS EVER has big plans for what it may sell.

Using the AS EVER Marks as an example, the owner should be aware of the following in Australia and New Zealand:

1.It is critical that a trade mark is applied for under the correct name at the type of filing and by the true owner of the mark. Filing in the wrong name cannot be remedied later, such as by assignment, and could affect the ability to enforce the trade mark or be a ground for invalidity.

2. The mark must be used by the owner or with their authorisation (e.g., under licence). If the AS EVER company (or a related company) uses the marks in Australia instead of 2022 TRADE MARKS LLC, the marks could be revoked for non-use. At a minimum, there should be a formal licence agreement regarding the right to use the registrations.

3. Applicants must honestly intend to trade in all the listed goods and services and consider whether it is commercially realistic to use the AS EVER across such a broad range. The three AS EVER applications cover hundreds of goods and services which could lead to issues with IP offices and future applicants. IPONZ may be assessing whether granting such broad rights is reasonable.

4. If the applications are accepted and the marks are not used on or in relation to the listed goods and services for a continuous 3-year period, those goods and services could be removed from the register. For example, if AS EVER is not used on wallpaper, matchboxes or trellises, these classes of goods could be challenged by an interested party and ultimately removed.

5. Genuine use of the AS EVER Marks must be demonstrated in the relevant markets of Australia or New Zealand. The AS EVER business cannot rely solely on use in the USA or other markets as evidence of use in Australia or New Zealand. This may require a website or social media targeted at Australia and/or New Zealand, marketing material received in those jurisdictions and evidence of goods and services provided to consumers there.

6. Lastly, if AS EVER is registered, it will only protect against unauthorised use as a trade mark by others.

So, I may continue to sign off… As ever, Kathryn McLardy

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