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 is genuine use and how do I prove it?
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:
- The mark is being used by a Licensee. In some countries, such as Vietnam, use by a licensee will only support the registration if the licence is in writing and has been registered at the local Intellectual Property Office, in other countries, such as South Africa, use by a licensee is accepted as proof of use even if the licence is unrecorded and there is no written proof of the licence. Proprietors often assume that as long as the mark is being used with their permission they won’t have any problems proving use. If your trade marks are being used under licence it is important to ensure you have complied with the local requirements to ensure the licence is recognised as effective and enforceable and that you are benefitting from the use being made of your trade marks by the Licensee.
- The mark is being used in a form slightly different to the mark as registered. In many territories, such as the UK and European Union, use of the mark in an altered form will be sufficient as long as the distinctive character of the mark has not been altered. In other countries, such as the Bahamas, the mark must be used exactly as registered to support the registration.
- What about translations and transliterations? This is an issue which is particularly pertinent in countries where a non-latin script is used and in countries such as India where multiple languages are widely spoken and understood. Often, global brands will adopt a trade mark that allows consumers to identify the brand wherever they are in the world and will not translate or transliterate the mark for local markets. Proprietors that adopt a defensive filing strategy might try to register a translation or a transliteration of their trade marks, but failure to use the translated or transliterated version of the mark can cause difficulties and you may need to consider a regular re-filing programme where allowable. In India, use of a trade mark in Latin script will support a registration for the Hindi transliteration, contrast this approach with China where the Latin script version of a mark will not support a registration for the Mandarin transliteration. In some countries, you might be forced to use a local transliteration, for example, in Saudi Arabia and Kuwait it is necessary to display the name of a store in Arabic on the outside of the store and certain areas of Moscow require store signs to appear in Cyrillic. In these situations, you need to consider whether use of the transliteration will support a Latin script registration and it may be advisable to file a trade mark in the local language script.
- The mark is used in advertising, but there are no actual sales. In Bulgaria use in advertising alone is not sufficient, but in Argentina use in advertising may be considered sufficient without supporting evidence of actual sales. It is always advisable to try to support use of a trade mark with sales invoices where possible.
- The mark is being used on some, but not all, of the registered goods and services. In Japan, use on one listed good or service will avoid cancellation of the entire registration. In Paraguay, use on one good or service implies use of all goods and services in the same class. In Argentina, if you can show use on any goods, even those which are not covered by the registration, the registration will be maintained. Contrast these approaches with the approach in the UK and the European Union where use must be shown for each general category of goods or services listed in the specification.
- Buying your way out of trouble: In some countries, for example Honduras, you can pay a fee annually to ‘protect’ your registration against non-use cancellation even if you are not using the mark. However, this is uncommon and in most countries where non-use cancellation procedures are available, your registration will be vulnerable to cancellation if it is not used and there are no genuine reasons for the lack of use.
The importance of evidence
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.