USE OF TRADEMARKS IN THE EUROPEAN UNION
The holder of a trademark must be able to prove that it is in a position to actually use it, whether to obtain registration (1), to maintain its rights (2), to extend the scope of those rights in the case of reputed trademarks (3) or to plead extinction of rights due to acquiescence (4).
In all cases, the use in question must be a use for the products and/or services covered by the registration and for a trademark and thus excludes corporate names, trade names and brand names.
1- DEMONSTRATING ACQUISITION OF DISTINCTIVE CHARACTER
A trademark with no distinctive character may be registered or approved if its filer is able to demonstrate that it has acquired a distinctive character through the use made of it, i.e. that the public perceives it as an indicator of the product’s commercial origin.
Proof by any means
Proof can be brought by any means, for example the trademark’s market share, the intensity, geographical scope and duration of use of the trademark, the amount invested by the company in promoting the trademark, the proportion of the relevant public that identifies the product with a certain company through the trademark, as well as rulings by chambers of commerce and industry or other professional associations (CJEU, decision of 4 May 1999, “Windsurfing”, C-108/97 and C-109/97, point 51).
Scope of use
It must be proven that the trademark is used in territory(ies) where it originally had no distinctive character.
It must be proven that the trademark is used with a significant proportion of the relevant public, i.e. the public concerned by the products and/or services covered.
The date on which acquisition of distinctive character must be demonstrated shall be:
- under an administrative objection, the date of filing for trademark protection (CJEU, ruling of 11 June 2009, “Imagination Technologies”, C-542/07),
- under a claim for nullity, the filing date or, at the latest, prior to the initiation of proceedings (General Court ruling of 15 October 2008, “Powersev Personal service”, T-405/05).
Some trademarks can never acquire a distinctive character. This is the case of prohibited signs (i.e. for reasons of public order or decency, deceptive brands or brands consisting of emblems) as well as signs with a shape based on the nature of the products themselves, the shape necessary to achieve the technical result and the shape that gives the product its substantial value.
2 – KEEPING RIGHTS FROM LAPSING
A registered EU trademark that has not been put to genuine use within the EU for the products and services covered by its registration during an unbroken period of five years could be contested for forfeiture by a third party.
The trademark must be used solely for business purposes (with actual and/or potential customers as part of a commercial activity to obtain an economic advantage to ensure a market for the products and/or services that it represents).
Purely internal use within the company or group is not sufficient to prevent forfeiture (CJEU, ruling of 11 March 2003, “Minimax”, C-40/01, point 37).
Scope of use
It is not necessary to prove use in each Member State of the European Union but use must cover “a substantial portion” of the European Union.
The holder of the EU trademark must prove that it has been exploited: (i) during the five years preceding the filing of the claim for nullity against it; or (ii) during the five years preceding the filing of the contested trademark claim in the context of an opposition procedure.
Starting or resuming a period of genuine use constitutes a defence against forfeiture unless it occurs within three months (the “suspicious period”) prior to the filing of a claim for nullity and if its holder was aware of the likelihood of a claim for forfeiture.
Proof by any means
Proof of use can be provided by any means.
3- ENJOYING ENHANCED PROTECTION OF REPUTED TRADEMARKS
The holder of an earlier registered trademark which is reputed within the European Union may contest the use and registration by a third party of a trademark covering similar products and/or services if use of such trademark unduly exploits the distinctive character or reputation of the earlier trademark or if it causes prejudice to it.
The reputed trademark thus enjoys enhanced protection which goes beyond the principle of speciality, i.e. even beyond the scope of the products and/or services included in the registration of the earlier trademark, subject to the following conditions:
- a certain degree of awareness by the relevant public (CJEU, ruling of 14 September 1999, “General Motors”, C-375/97, point 23). “It is only where there is a sufficient degree of knowledge of that trademark that the public, when confronted by the later trademark, may possibly make an association between the two trademarks, even when used for non-similar products or services, and that the earlier trademark may consequently be damaged.” (point 23)
- consideration of all of the relevant facts of the case, “in particular the market share held by the trademark, the intensity, geographical scope and duration of its use, and the size of the investment made by the company in promoting it” (point 27). The criteria considered are quantitative. The earlier trademark must be known to a substantial proportion of the relevant public.
- the EU trademark must be known in a substantial portion of the European Union.
The trademark must be well known or must have retained its recognition on the date on which the proceedings are initiated (past recognition cannot be asserted except in cases that have not exceeded the limitation period).
Proof by any means
Any dated documents mentioning the trademark and products and/or services, such as sworn statements, rulings by courts or administrative authorities, Office decisions, surveys and market research, certifications and awards, articles in the general press or specialised publications, invoices and other commercial documents, advertising and promotional material, and annual reports on the company’s results.
4- PLEADING EXTINCTION OF RIGHTS DUE TO ACQUIESCENCE (IN DEFENCE)
The holder of an earlier EU or national trademark or of another earlier national sign which, for five consecutive years, has tolerated the use of a later registered EU trademark while being aware of this use, can no longer file a claim for nullity or oppose the use of said trademark, unless the latter was filed in bad faith.
Extinction of rights due to acquiescence is a means of defence that the holder of a trademark that is subject to a claim for nullity or counterfeit can cite to contest the admissibility of this action.
The holder of the contested later trademark may cite this exception, as long as:
- its trademark has been registered for more than five years;
- its use in the EU (or in the Member State in which the earlier trademark is protected) was tolerated for at least five consecutive years with regard to the products or services covered by its registration or for a portion of them;
- the holder of the earlier trademark was aware of this use or could not reasonably have been unaware of it.
Note: sending a formal notice does not suspend the limitation period. A claim for nullity or counterfeit is therefore necessary.
Proof by any means
Proof can be brought by all means including advertisements, articles in the press or any other media, surveys, catalogues, citing distribution channels, trade fairs or exhibitions, exchange of correspondence, etc.
Throughout the life of a trademark it is therefore essential to keep proof of use of the trademark in the territories concerned.
These documents may consist of invoices, order forms, packaging, labels, rate cards, catalogues, brochures, advertisements, press articles, market research, written statements from professional organisations, etc.
These documents must:
- be dated,
- include a depiction of the trademark,
- show the products and/or services covered by the registration for which the trademark is being exploited.
Note: Use does not create rights. Registration is essential for obtaining monopoly rights.