Once a European Union (EU) trade mark registration has been on the register for five years, it becomes subject to use requirements. This means that if you try to rely on it to enforce your rights against third parties, you are likely to be required to provide evidence that you have genuinely used the mark in the European Union in the last five years. It also means that any third party can file an application to cancel your registration for non-use.
In the event you cannot provide sufficient evidence of genuine use, and you do not have proper reasons for non-use, your registration will be removed from the register.
What is Genuine Use?
In recent years there has been much consideration of what constitutes genuine use in the EU sufficient to support an EU trade mark registration. The question is relevant to all owners of EU trade mark registrations which have been registered for more than five years, but it is particularly pertinent for those trade mark owners who only use their trade marks in a small number of EU countries.
Recent Case Law
Back in 2012 a decision of the Court of Justice of the European Union confirmed that the question of genuine use must not be approached by asking whether there has been use in one, two or any other number of EU member states. It also said that territorial borders must be disregarded. However it did state that, as a general rule, use in just one EU member state is unlikely to be sufficient to prove genuine use in the EU to support a registration.
Since then, the courts of the EU and the national courts of EU member states have considered the matter further and this has resulted in inconsistent decisions and uncertainty regarding precisely how geographically widespread use needs to be in order to constitute genuine use.
We would advise that owners of EU trade mark registrations consider the geographical scope of the use of their marks.
If your mark is only being used in one or two EU member states, your EU registration may be vulnerable to cancellation by a third party, even if your use in those member states is extensive.
The issue may be of particular relevance to businesses whose primary interests are in the UK. It is going to be some time before we know whether the UK will remain a part of the EU trade mark system following Brexit, but in the event it does not, any use in the UK would cease to be acceptable to support an EU registration.
There is a process whereby the owners can convert their EU registrations into national applications in EU countries of interest and retain the filing date of the EU registration. Trade mark owners who are concerned might alternatively consider filing new national applications in the countries of specific interest to ensure they have sufficient protection.
If you are the proprietor of an EU trade mark registration and you would like to discuss these issues in the context of your trade mark portfolio, please do not hesitate to contact a member of our trade mark team.