I recently attended the FICPI Open Forum in Sorrento, Italy.
During the conference, there was a very interesting mock trial
session called "Necessary Geographic Extent of Use and Use of
a Translation of a Mark", which discussed about whether use of
variations of a registered trademark (e.g. change of color, gesture
/ head direction of the animal device in the mark, translation of
words into different languages) would or should be considered
sufficient use to overcome non-use cancellation in different
jurisdictions. Though the general principle of requiring genuine
and commercial use seems to be shared by most countries, the
specific examination criteria differs from country to country,
One of the issues discussed was the legislative intent of such
"non-use cancellation" procedure in laws, which I believe
is the most important question to answer, and the answer of which
would be the basis of evaluating whether certain examination
criteria is reasonable, fair and maybe recommendable for other
jurisdictions to follow.
To answer this question, we may first look at the nature and
function of trademark, which would be "distinguishing source
of goods/services", "carrying good will", as every
trademark attorney would say, and so, if the mark is not in actual
use, of course such nature and function cannot be fulfilled and
performed. But what if the mark is used, but not in the exact same
version as registered? In my personal opinion, the test should
still bewhether such use of variations of trademark can
still distinguish the source of goods/services and carry the good
will of the trademark owner in the relevant public.
If we consider trademark as a living creature, its registration
certificate as its "birth certificate", its sign of life
is being used in the market, just like the heartbeat and breath;
similar to the consequence of stopping heartbeat and breath for a
certain period of time, if the trademark stops its sign of life
(i.e. being used in the market) for a certain period of time, it
can die; also similar to the growth and natural development of any
living creature, trademark also evolves all the time, because of
the need to better fulfilling its mission, i.e.
"distinguishing source of goods/services", "carrying
good will", because the market is changing, the consumers need
and taste is changing, the "good will" itself is also
changing. It might be the most natural and unavoidable fact that
trademark owners need to modify the trademark from the version
originally designed and registered some years ago to certain
version which still functions as telling the consumers "these
products are from my company, and you can have the same trust as
before", but can convey such message in the best manner to
match the latest image of the company, and meet the latest
If we all agree that such evolvement of trademark is required by
the market, should law discourage or even punish such activity by
denying the use evidences of the later modified trademark in
overcoming the non-use cancellation of the original trademark?
If the relevant public in the market already recognize the later
version of mark as carrying the same good will of the owner, should
the law play the role of the evil queen here?
Let us also look at the consequences if the use evidences of the
later version of mark cannot overcome the non-use cancellation
against the original mark, first of all, the party who files the
non-use cancellation is usually an owner of a similar mark filed
later than the original mark, who will cheer for the cancellation
of the original mark because its own mark may become registered. Is
it a fair and reasonable that the owner of the original mark which
has been registered earlier and continued to be active in the
market manufacturing and selling products must now stop its
business because otherwise it would infringe the exclusive right of
the later registered similar mark? Is it fair and reasonable that
consumers who have been familiar with the earlier mark should now
watch more carefully on the labels to see if the products are from
the owner of later registered similar mark or otherwise would be
confused? Is it the legislative intent of the non-use cancellation
procedure? I believe not.
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