Trade Marks, Part IV: Use them or lose them.

If a registered trade mark is not used in the first five years, or for any uninterrupted period of five years, it can be challenged for non-use. In the event of a successful non-use challenge, your trade mark would be struck from the relevant register, leaving you without registered trade mark protection in that jurisdiction and, subsequently, unable to rely on that trade mark to oppose similar or identical third-party trade mark applications or to prove trade mark infringement by a third party.

What constitutes use?

To survive a non-use attack, you must be able to demonstrate genuine commercial use of your mark. At a minimum, this will usually require you to prove:

(i) use in the country of registration for the goods/services against which the trade mark is registered (i.e., stock records, sales receipts, customer contracts, turnover records for the goods/services listed in the trade mark registration).

(ii) that the use of the mark is not “token” use (i.e., you have evidence of sales in the country in question rather than just evidence of the trade mark being used on stationary, catalogues and price lists).

(iii) that your use is sufficient. This will turn on the facts of the case, like the type of products/services offered under the trade mark – the sale of one or two luxury yachts in a country might be sufficient, whilst the sale of one or two crates of beer might not be).

What if it has not been possible to use the trade mark?

If there has not been the required level of use, your registration and the associated protection may survive if you can provide justification. Again, this will turn on the facts of the case but, generally, the reason for the non-use would need to be outside of your control.

How can you avoid non-use attacks and the associated vulnerability?

• Work with an IP professional to secure the correct trade mark strategy from the outset - spending money on trade marks which are subsequently not used is not an effective use of company resources.

• Constantly review your trade mark portfolio to make sure that potential non-use issues are identified and, where possible, addressed ahead of time.

• Be aware of any local nuances when it comes to trade mark rules and regulations at the national level which may impact your strategy. For instance, in some countries like the US, you are periodically required to prove use to maintain registration.

• Make sure that, if a trade mark is being licensed (even if it’s an intragroup licence), that licence is documented so that you can demonstrate use by the right party/in the required jurisdiction.

• keep detailed records of trade mark use in each jurisdiction. If your trade mark is challenged, you are often required to provide evidence with little notice.

Disclaimer: Re-think Legal is a boutique legal consultancy providing businesses with legal support. The information contained in this blog is simplified and must not be taken as a definitive statement of either the law or practice of any given jurisdiction and does not constitute legal advice.