In the event of a possible opposition by a third party, it is necessary to have sufficient evidence to prove the use of the prior mark with documents that support its presence in the market for real commercial purposes.
As the proverb says: “Caesar’s wife must not only be honest but must also be seen to be honest.” In the case of a trademark that has been registered for over five years, the requirement is stricter than for Caesar’s wife, since to maintain its protection it must be in use, appear to be in use and you must be able to prove it.
It is crucial for trademark proprietors whose marks have been registered for more than five years to bear in mind, when exercising the rights in those marks, that the other party may request proof of use of the prior mark in an opposition or, worse, counterattack by applying for a non-use revocation.
At times, even if the trademark proprietor is using the mark, it may, for a number of reasons, be difficult to obtain sufficient, valid proof. Consequently, before contesting a third-party’s trademark on the basis of a prior registration that is under a use obligation, we must be certain that, if necessary, we have access to or are able to obtain, the proof of use that will have to be provided.
Trademark proprietors whose marks are subject to proof of use frequently ask the following questions:
- What does the EUIPO consider valid proof of use?
- How much evidence do I need to provide?
According to article 10.3 of the European Trademark Regulation (EUTMDR), the indications and evidence of use must establish the place, time, extent and nature of use of the opposing trademark for the goods or services in respect of which it is registered.
These requirements are cumulative, so the proprietor must prove for each one:
- That it refers to the territory in which the trademark has been registered. If it is a national mark, the proof must refer to the country in question. If it is a European Union trademark, for the use to be deemed genuine, it is not necessary for the mark to have been used in a substantial part of the EU, but simply in a single Member State. According to the EUIPO Guidelines, “The General Court has held on numerous occasions that use of an EUTM in a single Member State (for example, in Germany or in in Spain,), or even in a single city in a Member State of the European Union, is sufficient to satisfy the criterion of territorial scope”, bearing in mind the intensity of use and characteristics of the goods and services in question.
- That it refers to the period of time for which use must be proven, which is computed backwards for a five-year period from the filing date of the contested mark or priority date if priority is claimed. Therefore, the proof submitted must be dated within the relevant period of time, provided that this is possible in view of the nature of the evidence. That is, if advertising in the press is submitted, the date on which it was published must be evidenced, or if refers to the presence of the mark at a trade fair, evidence must be provided that said fair took place during the period indicated, in order to meet the requirement of proving when the use took place.
- This is the most difficult requirement to prove, since it is necessary to show that that the owner has seriously tried to acquire a commercial position in the relevant market. This does not mean that the opponent has to reveal the total volume of sales or turnover figures, but it must demonstrate that the product has actually been placed on the market, at the disposal of consumers and that efforts have been made to market it. Consequently, the evidence to be submitted must be of an economic nature, such as invoices and advertising investment.
- It must be evidenced that the mark has been used as such, that is, to designate the goods or services. The representation of the mark on packages, catalogs, advertising material or invoices related to the goods and services in question constitutes direct evidence that the mark has been put to genuine use.
However, whether the evidence regarding the place, time, extent and nature of use is sufficient must be examined globally, in light of all the evidence submitted. That is, it is possible that not all of the evidence contains a date, or that one requirement has been proven with more evidence than another, but overall, it must be clear that the mark is in use in accordance with the four requirements and it is especially important to prove the extent of use, since without this proof it is impossible to claim that the goods or services are on the market.
As a general rule, the following are of great help to prove use:
- Photographs that show the mark applied to the goods
- Boxes used for packaging, storage or transport
- Brochures, price lists, etc.
- Company stationery
- Annual reports
- Market studies
- Photographs of stands at trade fairs and the like
- Independent publications in the press
- Press releases
- Advertising excerpts (printed, online, on television, etc.)
- Photographs of vehicles or property of the company bearing the trademark
- Excerpts from websites
Regarding the volume of evidence, i.e., the number of items needed to prove each requirement, according to the EUIPO’s guidelines, the Office does not necessarily require a high threshold of proof of genuine use.
The Court of Justice has held that it is not possible to establish in advance the quantity of evidence that is needed in order to determine whether use was genuine or not. Accordingly, a minimum amount is not set to establish the level of use needed in order for it to be ‘genuine’. Although a minimum extent of use must be proven, what constitutes this minimum extent depends on each case, and especially on the goods or services concerned. For example, proprietors of luxury car brands cannot be asked to produce the same amount of evidence of sales, as proprietors of trademarks covering boxes of biscuits. In addition, depending on the relevant public, tubes of toothpaste are not measured in the same way as cancer medicine, the former being products that are widely consumed by the general public and the latter products that are sold to very specific medical practitioners.
The general rule is that, where a real commercial purpose is demonstrated, even minimal use of the mark may be sufficient, depending on the goods and services and the market concerned.