Use Requirements concerning registered trade marks in the EU

Kador & Partner, Munich, Germany by Jennifer Clayton-Chen
Verifier: Alexander Nette, Hoffmann Eitle, Munich, Germany

Abstract: In the EU, registered trade marks have to be put to use within a five year term which begins at the registration date and ends five years thereafter, i.e. use of the trade mark has to be started within the five year term and continued thereafter.

If the trade mark concerned is a national trade mark (e.g. a German trade mark registration), use has to be started and continued in Germany. If it is a Community trade mark, which is valid in (at present) 15 EU Member States, use can take place in several or all of the Member States, but in order to meet the use requirements it is sufficient if use has taken place in at least one Member State, e.g. Germany.

Keywords: Use requirements, evidence of use; genuine use; serious use; non-use.

1. Why is it necessary to use a registered trade mark in the EU?

Unlike in the United States, it is not necessary to file evidence of use with the national (e.g. German) or Community Trade Mark Office after a certain period of years after registration.

Not using a registered trade mark within the five year period can, however, result in a loss of rights of the trade mark owner, in particular

- he runs the risk of having his trade mark registration cancelled for non-use at the request of a third party;

- he runs the risk of not being able to file opposition or an infringement or cancellation suit against a conflicting junior trade mark, because non-use of his trade mark could result in the opposition or law suit being rejected as not being justified.

 

2. What is "genuine use"?

The German legal provisions refer to "serious use", the Community provisions refer to "genuine use", which is essentially the same.

The First Board of Appeal of the Community Trade Mark Office defines genuine use as "real use of the mark on the marketplace, so as to draw the attention of potential consumers to the goods or services effectively offered under the mark". The Second Board of Appeal contrasts genuine use with token use. "It implies real use for the purpose of trading in the goods or services in question as opposed to artificial use designed solely to maintain the trade mark on the register."

3. In what manner should the trade mark be used?

a. The trade mark should be used on the actual product, if this is technically possible. The trade mark can be directly applied to the product (e.g. by painting or printing), or it can be firmly attached, e.g. with a stick-on or sew-in label. If none of these alternatives are possible, the trade mark should be used on the container, bag, wrapping or other packaging, and in addition on accompanying leaflets such as user manuals, assembly instructions, safety instructions and the like. Printed material should be provided with dates, if feasible.

b. The trade mark should be used in catalogues, leaflets and brochures which are distributed to customers and potential customers.

c. The trade mark should be used in the invoices to customers, in order to clearly identify the product sold, and in price lists.

d. In addition, the trade mark should be used in advertising in newspapers, journals and magazines.

Important: The trade mark should be used exactly as registered, i.e. in the same spelling, and without anything added or omitted. Changing the impression of the trade mark could result in such use not being recognized by the authorities as use of that mark.

4. What evidence has to be collected in order to prove "genuine use" of the trade mark?

a. Material showing use of the trade mark on the product or on the packaging, e.g.
- samples,
- photographs,
- photographs and pictures in catalogues or brochures.

b. Other printed material which refers explicitly to the trade mark concerned, such as
- labels, sew-in labels, hang-tags,
- price lists, product information, product manuals,
- copies of several invoices to customers in the relevant territory for each year; these should state the product and trade mark concerned,
- advertising examples from newspapers, magazines, journals.

c. Material from independent sources, such as
- newspaper cuttings of independent (journalists') reports about the product,
- market studies or market research reports,
- awards from industry or consumer groups, recommendations of independent companies or organizations.

d. Turnover figures referring to the trade mark and territory concerned.

Important: All evidence must refer to the trade mark concerned, and all printed material should show the publication date.

5. What else should one do?

a. Use of the trade mark should be monitored, i.e. regular checks should be made to ascertain that the trade mark is used in the manner as described in item 3.

b. A use file should be maintained and continuously updated. Ideally, the file should contain evidence of use from first use throughout the life span of the trade mark.