Now this may sound a little depraved, but I couldn't find a better subject line to explain this. So, my apologies in advance. You may be wondering about the proviso, so here it goes... "only if you keep using it!".

Yes, a bigger trademark portfolio is good only if it is used. "Use" is a controversy which may take a few more years to be resolved but I am confident that with constant changes in the global economic climate, the definition of trademark use will sooner or later, be redefined.

The trademark laws of most (read as almost all) countries provide a use period which, if not complied with, renders a trademark registration prone to cancelation on grounds of non-use. And why not? We should adhere to antitrust laws, discourage monopolies and provide an open playing ground in the marketplace. Well, is that actually true? ...and whether non-use cancellation results in achieving the later objectives? once again a myth. The consequences in many cases, of which professionals and brand owners are well aware of, are legalized infringement, dilution and deception of consumers, at least where the trademark is known / well-known.

Globally Well-known Marks

Let's take an example of a globally well-known mark, say MONOPOLY. Hasbro, in addition to its core goods, uses its mark on several promotional items including clothing and hence requires protection of their mark in class 25. That said, they may not be using the trademark in relation to clothing around the world. So, let's assume, the mark is not used in the UAE for a continuous period of five years in relation to the claimed goods in class 25; the law stipulates that any third party can request cancellation of the trademark on grounds of non-use. The burden of establishing use would be on the brand owner. In the absence of serious use, Hasbro would not have supporting grounds, such as, trade embargos or other restrictions detrimental to their use of the mark in the UAE and therefore, cancellation will be evident. Once cancelled through a court order upon request of an interested third party, that party may be able to obtain registration of the mark on the basis of the court decision. Even if registration is not granted due to MONOPOLY being a globally well-known mark, the adverse party would be able to commence use of the mark until Hasbro obtains a restraining order from the Court on grounds of unfair competition or passing off, which shall be a tedious and expensive process. The result would be infringement of a well-known mark under legal protection; dilution of a famous mark and deception of innocent consumers who will purchase counterfeits believing that they originate from Hasbro.

Regional Well-known Marks

The troubles for such marks which are famous in certain jurisdictions but not globally are much higher than a globally well-known mark. The brand owner, after their mark is canceled on grounds of non-use, will have to establish the well-known status of their mark in order to prevail in an opposition proceeding. If the well-known status is not established, the opposition is likely to be rejected and the adverse party may succeed in obtaining registration – resulting in infringement under legal cover. Unless the brand owner has an efficient policing program in place, counterfeits may seep in the market unchecked.

Marks which are not Well-known

Marks which are not famous either internationally or regionally, unfortunately, have no case. The registration shall be cancelled and the adverse party will most likely get to register or use the mark without interruption. Usually, such cancellations are obtained by infringers to legally produce goods in a certain jurisdiction and thereafter export them to countries where the mark is in demand.


Many companies use the evergreening tactic to maintain their rights in the absence of use. This is getting harder, particularly in the light of recent Court decisions, including the decision issued by the EU General Court in the Hasbro matter.

Portfolio Management

In most cases, defensive registrations are obtained with a view to protect the trademark from dilution, in pursuance of future expansion plans, to capitalize on the goodwill created through huge investments and to stop infringement. That said, such grounds usually do not stand the test of "Use" and "bad faith".

In order to maintain larger portfolios and defensive registrations, effective portfolio management plays a vital role. New strategies, out of the box thinking and closely monitoring use deadlines is required by brand owners and their portfolio managers to keep the ball rolling, and in the right direction.

Definition of Use

During the past two years, the world has witnessed a considerable increase in online shopping. According to estimates, global online sales are up by around 40%. This calls for a review of trademark laws around the world and redefining the definition of Use to include online presence, availability and sales.

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.