The use of a trade mark in commerce is not a requirement for trade mark registration or renewal in the European Union. However, a lack of use can lead to a trade mark right being ineffective against third parties. This means that you might not be able to stop competitors from using/registering a similar or identical trade mark if your registered trade mark has not been used.
In the worst-case scenario, the absence of proof of use of a European Union trade mark (EUTM) could lead to its cancellation, if requested by a third party. This means the EUTM may cease to exist at least in regard to the products/services that use cannot be proven for. A less dramatic, but still dangerous, consequence of lack of use could be the rejection of an opposition, leading to the registration of an identical or similar trade mark in the name of a competitor.
An opposition is an administrative procedure which a trade mark holder can use to challenge an identical or similar trade mark application made by third party from being registered.
After being registered for a period of five years a trade mark becomes susceptible to an “obligation of use” request made by third parties, either during an opposition procedure or through a cancellation action. A trade mark must be used in commerce in order to be an effective instrument of attack or defence against competitors – that is, the registered commercial symbol must be able to be connected with the relevant products/services, in the relevant territory, at the relevant period of time during a commercial act.
Should a trade mark that is registered for over a period of five years not be able to prove its use upon request from the challenged trade mark applicant, opposition will be rejected and the challenged trade mark registered, exposing a great weakness for the previously registered trade mark.
