Know your trade mark inside out – the devil is in the details.
What have you registered as a trade mark? Is it a name? Or a name and a logo? What are the details that characterise the logo? For example:
The symbol above could be described as a colourful, striped apple with a leaf on the top and a bite taken out of the side. This example was actually registered on behalf of Apple Inc as EUTM 000745 on October 25, 1999 for computers in class 9, printed matter in class 16, telecommunications in class 38, educational services in class 41 and computer consultation in class 42.
The symbol above could be described as a combination of the words GP GIRARDI INTELLECTUAL PROPERTY, with the letters GP written in yellow and the rest of the words written in white, all inside a dark green rectangle, with the words INTELLECTUAL PROPERTY inside an additional grey rectangle. Let’s imagine it was registered as a Spanish trade mark for legal services in class 45.
The “distinctive character” of a trade mark is given by all the different words and elements that compose it. In short, the distinctive character is what makes your brand unique and different from the brands of your competitors, or in other words, what allows the brand to exercise its essential function, which is to make consumers recognise the business origin of the product/service that they have acquired, are acquiring or will acquire.
For use to be considered proven, the distinctive character of the trade mark as registered cannot have been altered over the time of use. Thus, special consideration must be given to modifications introduced by rebranding processes. In case of doubt, do not hesitate to contact an experienced professional.
A mere change in colour will not alter the distinctive character of a trade mark as long as the rest of the elements that compose the trade mark coincide and represent the main distinctive elements. The contrast of shades should also be respected for the distinctive character to be considered unaltered.
This is an example of how a logo can undergo a change in colour without altering the distinctive character of the trade mark as a whole.
What products/services was the symbol registered for?
Careful consideration must be given to the goods and services for which the trade mark was registered and is now being used, as the goods/services for which the trade mark is being used must at least fall within the same category of goods/services for which it was registered.
E.g. “Footwear” and “retail of footwear” will not be considered as falling within the same category.
As seen in Module A, section B, the scope of protection of registered trade marks is limited by the elements that compose the trade mark in connection with the products/services that were indicated in the trade mark application.
Use in the territory of the European Union
An EUTM need not be used in an extensive geographic area of the European Union for use to be proven. According to the settled case-law of the European Courts, the use made in the territory of only one Member State, or even in a single city of a Member State of the European Union, is enough to satisfy the proof of use territorial requirement, as the borders between Member States must be disregarded.
“Genuine use will depend on the characteristics of the goods or services concerned in the corresponding market and, more generally, on all the facts and circumstances relevant to establishing whether commercial exploitation of the mark serves to create or maintain market shares for the goods or services for which it was registered”. (EUIPO Guidelines)
Use in the relevant period of time
The relevant period can only be calculated in the face of a real-case scenario in which an opposition or cancellation action has been filed. Where an opposition has been filed, the relevant period will be computed five years backwards from the filing date of the challenged trade mark or from its priority date, if applicable. Where a cancellation action has been filed, it will be computed five years backwards from the filing of the cancellation.
Use made 25 years ago will generally fall outside the relevant point in time and will therefore be considered irrelevant. As you can never know beforehand when the relevant point in time will be, it is better to always be prepared and build evidence accordingly just in case, because you never know when the need to file an opposition will arise, or when a competitor may file a cancellation action.
Evidence, evidence, evidence
Evidence can be based on anything that takes into account the previously mentioned characteristics of the registered trade mark’s distinctive character, in the relevant territory, in the relevant period of time and for the goods/services for which the trade mark was registered.
In practice, evidence can take the form of product packaging, labels, price lists, catalogues, invoices, photographs, newspaper and magazine advertisements and written declarations. However, regardless of the type of evidence produced, information about the relevant point in time, territory, goods/services and the actual sign used must be able to be clearly inferred from it.
Additionally, it is best not to rely on only one type of evidence; rather it’s best to have a variety of sources of evidence.
Reasons for non-use
Exceptionally, proper reasons for non-use can be submitted to help overcome the obligation of use. These reasons must be beyond the control of the trade mark owner and must constitute an obstacle to use of the trade mark. In addition, it is important to note that any reason for non-use submitted during an administrative or judicial procedure will most likely be interpreted very narrowly.
Financial hardship is generally not considered a reason for non-use. However, restrictions on the importation of goods have previously been considered proper reasons for non-use.
In cases where reasons for non-use existed during only part of the relevant five-year period, they may not be deemed sufficient to set the proof-of-use requirement aside.
Cancellation action for non-use
Any third party may initiate an administrative action for the cancellation of a trade mark based on its non-use. To avoid the trade mark being cancelled, the owner will have to provide proof of use or proper reasons for non-use.
Once a trade mark has been cancelled because genuine use in commerce could not be proven, that trade mark will cease to exist and third parties may re-apply for an identical sign in connection to the same products/services in that relevant territory without fear of an action being brought by its previous owner.
The main reason behind this type of action is to preserve the right of creating an economy with intangible assets. The essential function of a trade mark is to enable consumers to recognise the business origin of the product/service they have acquired, are acquiring or will acquire. If a trade mark is no longer used in commerce, then third parties should be entitled to claim their ownership of it and use it.
As with any other administrative decision, a cancellation decision can be appealed first administratively and then judicially.
