Any owner of a trademark that has been registered for a certain period of time is at risk of revocation for non-use, which is why it is important to plan ahead.
Once the five-year period following registration has elapsed, your trademark may become vulnerable to revocation proceedings for non-use. The risk? Your rights may become unenforceable, or you may even lose them in the relevant territory, for all or part of the goods and services covered by the registration.
However, by adopting a few simple practices, this risk can be largely managed.
Even outside of any dispute, any interested third party may seek revocation on the grounds of non-use. The aim? To have your trademark revoked and removed from the register, thereby making it available for registration.
The risk may also arise when you wish to invoke your rights against third parties. This could involve, for example, preventing the registration of a trademark that is too similar to yours or seeking a declaration of invalidity of an already registered trademark. Failure to use your trademark is the opposing party’s first line of defence!
In these various scenarios, proof of use must be provided within very tight deadlines: one month before the INPI (French National Institute of Industrial Property) andtwo months before the EUIPO. Such proof must therefore be readily gathered.
In other words: five years after registration, a trademark for which you cannot provide proof of genuine use is significantly weakened.
Businesses which encounter the fewest difficulties are those that adopt good practices. Regularly collecting proof of use of your trademark is the most effective safeguard against revocation.
In this regard, the proof of use provided must demonstrate use of the trademark as a trademark, aimed at maintaining or creating market shares, rather than purely symbolic use or use merely as a trade name, for example.
In practice, a wide variety of documents can be collected, as genuine use can be proven by any means: invoices, brochures and catalogues, marketing materials, advertisements, website screenshots, product packaging, etc.
Get your marketing and communications teams on board : they are on the front line to help you gather proof of use.
Good to know : genuine use may be demonstrated by the trademark owner or by persons using the mark with the owner’s consent, in particular a licensee.
Proof of use is assessed as a whole by the offices, which evaluate its consistency and relevance.
In practical terms, the proof submitted should clearly identify:
Particular care should be taken with regard to the applicable rules, which vary from jurisdiction to jurisdiction. In the United States for instance, proving the use of a trademark involves filing periodic declarations with the local trademark office.
It should also be noted that the point at which a trademark may be challenged on the grounds of non-use varies from country to country, and the rules may be more stringent. In China, for example, a trademark may be challenged after only three years of non-use following its registration.
Building a robust file of proof of use cannot be improvised: it is an essential investment in protecting and enhancing the value of your trademarks, which are strategic assets for your business!
Our team of experts assists you in implementing best practices to protect, enforce and enhance the value of your trademarks over the long term.
