In nearly all territories, trade mark proprietors will come across issues of trade mark use at some point in the life of a trade mark. In countries such as the USA, use of a trade mark is a central theme in the trade mark application and registration process and proprietors will be expected to show use of their trade marks in order to obtain and maintain a US trade mark registration. In other territories, such as the UK and the EU, there is no requirement to actively show use of a trade mark in order to obtain and maintain a trade mark registration, but once the registration is over five years old it will be necessary to prove use of the mark in order to enforce it against a third party, whether in opposition or infringement proceedings. Most territories also have procedures whereby a third party can apply to have a trade mark registration cancelled and removed from the register unless the proprietor can prove the mark is in use.
This article takes a brief look at some of the issues which arise in the context of proving use of your trade mark.
Most countries provide for a ‘grace period’, this is a period during which the trade mark proprietor is not expected to provide evidence it is using a mark. As a generality, a grace period will be three or five years long. During this period it is not possible for an application for cancellation on the ground of non-use to be filed by a third party and the trade mark can usually be enforced against a third party in opposition or infringement proceedings without the need to prove use of the mark.
What constitutes use varies from country to country. A common theme throughout the world is that use must be genuine, namely, it must not merely be token use for the purpose of preserving the trade mark registration. The threshold of what constitutes genuine use varies widely, as discussed in more detail below.
In reality, proving use of a trade mark is rarely straightforward. Complex business relationships and company structures, expanding business offerings and the desire of trade mark proprietors to seek a broad scope of protection when filing new trade mark applications are some of the factors that can make things difficult when a proprietor is put to proof of use. Some common issues which arise are:
It is important to remember that you will have to provide hard evidence of use of the mark if challenged and your evidence will need to meet set criteria. It will not be enough to rely on the fame or repute of your brand, a point that is illustrated well by the fact that Gucci had its famous interlocking G’s logo partially revoked in the UK for failure to use it because it simply did not produce evidence the mark had been used on all of the relevant goods and services.
In all territories it is advisable to keep comprehensive records/evidence of the use being made of your registered trade marks which will be available to you in the event you are required to prove use. Examples of evidence often produced include samples of goods bearing the mark, publicity material, sales invoices and information relating to marketing spend and sales figures which relate to the relevant goods bearing your trade marks. All evidence should indicate the date and relevant territory in which the mark was used, it should also show a link between the mark and the goods and services the mark is used in relation to. The more suitable evidence you have available if you are required to prove use, the stronger your position will be. Invoices which have been sent to customers are usually said to be good evidence, but my experience is that client invoices don’t always show the trade mark and often use internal product codes which makes it difficult to easily identify the relevant goods. I also find that businesses are happy to point you in the direction of the company website or provide a current brochure or catalogue, but cannot provide back dated versions. When proving use of a trade mark, you will nearly always need to show use over a period of years. It is advisable to keep an archive of old brochures and catalogues, old magazines in which adverts or articles relating to your company have appeared and old versions of your website. Evidence of use usually needs to be easily accessible at short notice and it is difficult and costly to dig out evidence that is over five years old in a short space of time if you have not been storing this information in preparation.
If you require any information in relation to any of the issues raised in this article, please contact a member of our trade marks team who will be happy to assist you