When your trademark registration is five years old in Denmark or the EU, it becomes vulnerable to third-party cancellation due to non-use. This means that a third party may succeed in revoking your trademark if you are unable to prove sufficient use in relation to the goods and services covered by your registration.
Though the post-registration period may differ from country to country, the use requirement is a condition for maintaining your trademark right in most countries.
The need to prove actual and genuine use does not arise only in relation to actions to revoke registrations, but also in situations of general disputes, including infringement, opposition and invalidity actions.
Consequently, it is important that you are always able to provide documentation for your use and we advise trademark proprietors having passed the registration process to use their marks in the relevant market in an open, public and commercial way, and to keep detailed records of such use. Mere promotional activities are not always enough to prove genuine use.
Common to all types of use documentation is the requirement that it must clearly show:
- that the trademark has been used as a trademark by the proprietor (and not merely as a company name);
- the goods and/or services for which the trademark has been used; and
- when the trademark has been used – the material must be dated!
To strengthen your position in potential future proceedings requiring a trademark proprietor to prove genuine use, we recommend that all trademark proprietors for example keep records for the past 5 years of:
- invoices to clients or customers clearly showing the trademark and a description of the nature of the product or service (e.g. socks, shirts, pharmaceuticals, advisory services, etc.) shown on the invoice together with the trademark;
- photographs identifying the product in the packaging, also marked with the trademark;
- duly dated marketing material, e.g. labels, price lists, catalogues, brochures, newspaper advertisements, printouts from the Internet and social media on an ongoing basis, marked with the relevant date and showing the trademark in relation to all goods and services subject to the registration;
- samples of advertisements, including online advertisements with a clear date and indication of country;
- circulation figures for newspapers and magazines;
- market surveys and brand awareness analysis; and
- sales figures.
The geographical scope of use of a trademark is only one of several conditions to be examined collectively when considering actual use of an EU trademark.
Generally, the use of an EU trademark in one single member state will be sufficient to prove use in the entire EU, as certain barriers naturally exist within the internal market, such as language, which make access to certain parts of a particular market more difficult.
Therefore, use in one single member state may satisfy the conditions for actual use of the EU trademark, however, it is an issue often raised in proceedings, typically from large member states.
Summarizing, we recommend that you exercise due care when using your trademarks once they have been registered, ensuring use of the marks as registered in relation to the goods and services protected, and that all marketing material be duly dated and kept on file for at least 5 years.
It is our experience that the national authorities are especially keen on documentation showing actual sales of the products and services, i.e. by way of invoices. In this respect, it is essential that the invoice clearly shows the trademark and specifies exactly what products or services have been sold. This is something to consider in the description, details and layout of invoices.