A recent EU trade mark decision involving the companies Copenhagen Studios GmbH and Hoboken Inversiones, S.L, and the trade mark WONDERGIRL deals with an application to cancel a trade mark registration on the basis of non-use.
There is, of course, nothing unusual about this, but on this occasion, we will not examine the facts. Instead, we will concentrate on the law as this decision arguably provides an unusually detailed and useful recap of the law regarding the non-use of a registered trade mark. Trade mark non-use provisions are similar throughout the world.
Here are some of the points made in the EU decision:
The five-year rule
Article 58(1)(a) of the European Union Trade Mark Regulations ("EUTMR") says this:
'The rights of a proprietor will be revoked if, within a continuous period of five years, the trade mark has not been put to genuine use in the EU for the goods or services for which it is registered, and there are no proper reasons for the non-use.'
There are similar provisions in other jurisdictions.
When is the use of a trade mark genuine?
Genuine use occurs 'where the mark is used in accordance with its essential function as a trade mark, which is to guarantee the identity of the origin of goods or services for which it is registered'. A trade mark is often referred to as a 'badge of origin'.
When is the use of a trade mark not genuine?
Genuine use 'does not include token use for the sole purpose of preserving the rights conferred by the mark'.
For example, if you have a registered trade mark that has not been used for some time, your registration could be vulnerable to attack by a third party based on non-use. In many countries, the non-use vulnerability period is five years from the date of registration.
Sudden commercial activity
You cannot avoid an attack on your registration by simply releasing a small quantity of trade-marked products into the market. Why? That sudden commercial activity might not be regarded as genuine use, it might well be regarded as strategic use that is simply intended to keep a trade mark registration alive.
Genuine and successful are not always the same
These words from the EU decision are interesting:
'Although the concept of genuine use excludes minimal and insufficient use as a basis for finding that a mark is being put to real and effective use on a given market... the requirement of genuine use does not seek to assess commercial success... nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks.'
More on assessing whether use is genuine
When establishing whether trade mark use is genuine 'regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly:
- whether such use is viewed as warranted in the economic sector concerned to maintain or create a share of the market for the goods or services protected by the mark;
- the nature of the goods or services;
- the characteristics of the market; and
- the scale and frequency of use of the mark.'
Token use will not cut it
Within the EU, genuine use is understood to mean 'real use that is not merely token ...genuine use of the mark entails use of the mark on the relevant market and not just internal use by the undertaking concerned'.
Place, time, extent and nature of use
Evidence of use must deal with the 'essentials'. These are the 'place, time, extent and nature of the use'.
No probabilities or suppositions:
Genuine use of a trade mark entails 'solid and objective evidence of effective and sufficient use of the trade mark on the market concerned'.
Obligation on trade mark owner, very specific, a high bar:
When it comes to non-use cancellation proceedings, generally, 'it is the obligation of the trade mark owner to furnish proof of such genuine use with regard to each of the goods and services at issue... in the absence of such proof, the protection afforded to the trade mark in relation to such goods and services must be revoked.'
Trade mark non-use issues come up frequently, which makes the WONDERGIRL case worth noting!
*Reviewed by Gaelyn Scott, Head of ENS' Intellectual Property Department
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
