Genuine use of trademarks and consequences of lack of genuine use

In most countries, the trademark holder has 5 years to commence the genuine use of the mark from the date of registration. What does it mean for your trademark registration strategy?

Genuine use means a considerable volume of sales and/or advertising with the trademark in connection with the goods or services for which it is registered. It is not necessary to use the mark at the time of registration and there is no ex officio examination of actual usage during the time of protection. After the 5 year period, however, the lack of use or “unnecessary” elements in the list of goods may cause problems. After 5 years, any person can file a request for the revocation of trade mark protection by reason of non-use. Lack of use may also lead to rejection where the trademark holder tries to oppose new trademark applications. Most countries have a similar regulation, except the United States, where genuine use has to be proven automatically (without any application for revocation) and quite soon, at the time of registration.

In the case of European Union trademarks (EUTM, genuine use within 5 years in one or several EU member states is sufficient.

Revocation of the trademark protection is an adversarial process; it has to be requested by an adverse party. Upon receipt of the request of cancellation, the Office notifies the registered proprietor to submit evidence of use of the mark. If the registrant cannot provide appropriate evidence of use within the prescribed period (or legal justification for non-use) the Office will cancel the disputed mark from the Register. If appropriate evidence of use or justification of non-use is provided, the registration will be maintained. The Office files its decision based on a preparation in writing and an oral hearing. The losing party shall bear the expenses of the procedure.

Is it sufficient to use the trademark in a form different from how it was registered?

The trademark has not only to be registered but has to be actually used as well in the same form as it was registered. If the logo is altered only in minor elements which do not affect its distinctive character, use of the logo is still considered as genuine use of the trademark.

Genuine use of the trademark is only recognized when the trademark is used in a form which only differs from the registered form in elements which do not effect its distinctive quality.

In order to reduce risks to the minimal, it is advisory to register a new trademark in case of rebranding. Under these circumstances, the possible opponents can not request proof of use of the trademark for another five years.

Using the trademark in different colors do not affect its distinctive quality if the following conditions are satisfied:

a) the word/figurative elements coincide and are the main distinctive elements;

b) the contrast of shades is respected;

c) color or combination of colors does not possess distinctive character in itself and;

d) color is not one of the main contributors to the overall distinctiveness of the mark.

What is the range of protection in the case of black and white or greyscale trademarks?

A trademark in greyscale or in black and white is not identical to the same mark in color unless the differences in the colors or in the contrast of shades are insignificant. An insignificant difference between two marks is a difference that a reasonably observant consumer will perceive only upon side by side examination of the marks. 

If a trademark is registered in black and white and then used in colors, it is usually considered as genuine use of the mark, except if the change in colors would alter the dominant elements of the mark.

Please note that different versions of the same trademark may be used in business as long as the differences in relation to the registered form do not alter the distinctive character of the mark. Use of the registered community trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered shall also constitute genuine use of the same trademark.

The requirements are as above: the distinctive character of the registered mark should not be altered and a change only in color does not alter the distinctive character of the trade mark, as long as these requirements are met. Besides,

- color or combination of colors does not possess distinctive character in itself; and

- color is not one of the main contributors to the overall distinctiveness of the mark.

With respect to the color (or combination of colors) of the registered trade mark possessing or not distinctive character in themselves, the underlying idea is that on occasions, it is actually the color or color combination that possesses the distinctive character. For example, refer to the signs below, where the distinctiveness of the sign on the left could be considered to come from its colors or color combinations, thus making it difficult for the owner to prove use if the mark is only used in black and white.

Black and white/greyscale and color figurative marks are considered identical, if the differences between them are insignificant. Even if there is no identity, this does not exclude that there could still be likelihood of confusion if the marks are considered similar and the other necessary factors are present.

How to use figurative marks consisting word elements?

If you decide to register a figurative mark, you have to use the version of the mark together with the figurative element. It is possible that in some occasions you use only the word elements if you can prove the usage of the mark together with the figurative element in other occasions. Using the trademark with the figurative element is important also because 5 years after registration a cancellation (revocation) action can be initiated if proof of use is not provided in the form the trademark was registered.

How to prove genuine use?

It has to be proven that in the mind of consumers the mark is connected to the applicant and his goods and services, due to intensive use both in temporal and geographical sense. After examining the evidence, the Office makes a decision whether the evidence is acceptable for at least one part of the list of goods.

Evidence can be submitted both in digital and paper format (for the purpose of court procedures, it is advised to submit them on paper). A document proves genuine use only in the case if it clearly shows the trademark or it can be recognized that the document was created upon the usage of the trademark (e.g. product code on invoices).

Among others, the following documents can be utilized as evidence:

-        promotional materials, advertisements (advertising investment figures and reports, press cuttings, billboard posters, TV adverts) together with evidence of their intensity and reach

-        evidence of media presence

-        catalogues

-        invoices (preferably of larger volume sales)

-        contracts, sale-purchase agreements, business correspondence

-        customer and/or market surveys

-        affidavits

-        sales brochures

-        price lists

-        annual reports

-       turnover figures.

Further important points

-        do not forget to use the trademark and the logo in internal and external electronic communication (e-mails) of the company

-        document the products sold by means of taking pictures (before selling) - the products have to display the trademark, although minor modifications are possible

-        invoices and the relevant products have to be identifiable (which invoice is for which product): types of products need identity numbers or serial numbers; this has to be shown in commercials and promoting activities

-       prepare printed promotional materials displaying the trademark, possibly many types, and spread those on the market (for retailers), so that addressees and posting times has to be identifiable