Your comprehensive guide to trademark genuine use in the EU

In the European Union, in contrast to other jurisdictions such as the US, the legislation provides that trademark owners benefit from a 5-year “grace period” until they may be required to demonstrate genuine use (Article 18 EUTMR).

This article aims to set forth an intelligible, synthesized guide to comprehend how genuine use is proven.

Disclaimer: All the information has been drawn from the EUIPO trademark guidelines which provides a comprehensive database for basic knowledge concerning EU trademarks.

Defining Genuine Use

EU case law has established what “genuine use” refers to in two landmark cases: Minimax (11/03/2003, C-40/01) and Laboratoire de Mer (27/01/2004, C-259/02).

In the aforementioned decisions, the following principles have been extracted:

In Minimax:

Actual Use Required:

Genuine use involves real, not just token, application of the trademark. Token use refers to the lack of a true interest make the brand a commercial asset.
Example: A clothing brand legitimately selling its apparel under its trademark on retail and online platforms, rather than selling two dresses every few months.

Function of a Trademark:

The trademark should ensure consumers can clearly identify the product’s origin.
Example: A unique logo on phones that distinguishes the brand from competitors.

Market Engagement:

Usage must be in the course of trade, beyond internal purposes.
Example: Launching a nationwide advertising campaign for a new beverage line under its trademark, rather than solely using the mark on internal documents.

Product or Service Readiness:

Use relates to goods/services already on the market or being prepared for launch through advertisement.
Example: An automotive company promoting a forthcoming car model through promotional events.

Commercial Reality:

Economic viability in the sector should justify the trademark’s commercial use.
Example: Seasonal marketing campaigns for a brand of winter sports equipment.

Context-Sensitive Use:

Considerations include market nature, use frequency, and necessity for market share.
Example: A luxury watch brand using its trademark in select, high-end markets.

Not Always Large Scale:

Genuine use can be limited if suitable for the market characteristics and product type.
Example: A niche artisanal cheese brand using its trademark within local farmers’ markets.

In Laboratoire de Mer:

Case-by-Case Assessment:

Factors like product type, usage frequency, and scope of use are considered.
Example: A tech brand using its mark only on its laptops, not all devices.

Single Client Use:

Use by one client can be genuine if there’s a commercial reason.
Example: A boutique wine imported by one restaurant chain.

No Minimum Rule:

No fixed minimum use is required to prove genuine use.
Examples: An artisanal coffee roaster with limited specialty releases.

Proving Genuine Use

Once trademark owners understand the concept of genuine use, they must also learn how to demonstrate it to be prepared to prove genuine use when required.

Basic info: Evidence must collectively show the place, time, extent, and nature of use, not assessed individually but as a whole.

The requirements

Place of use

Use in the Territory Where the Trademark is Protected:

Trademarks must be actively used in the geographical area where they are registered. This use is crucial to maintain the trademark’s legal protection. If a trademark is not used in its registered territory for a certain period, it may be vulnerable to cancellation due to non-use. Regular use demonstrates the trademark’s relevance and helps prevent others from challenging its validity.

EUTMs: Use in the European Union:

European Union Trade Marks (EUTMs) provide protection across all EU member states. To sustain this protection, the trademark must be used within the EU. While it’s not necessary to use the trademark in every member state, the use should be substantial enough to justify its EU-wide protection. This means the trademark should be used in a manner that reflects its commercial presence and significance within the EU market.

National Marks:

National trademarks are registered in individual countries and require use within those specific countries to remain valid. If a trademark is not used in the country where it is registered, it risks being revoked for non-use.

Use in the Import and Export Trade:

Trademarks can be used on goods involved in international trade, such as those being imported into or exported from the territory where the trademark is protected. This use is important as it demonstrates the trademark’s active role in commerce, helping to maintain its validity. By showing that the trademark is used in the context of international trade, owners can reinforce its commercial significance and protect it from challenges.

Time of use

Contested EUTM Applications and International Registrations Designating the EU Filed On or After 23/03/2016:

- For EUTM applications and international registrations designating the EU filed on or after March 23, 2016, the legal framework and procedures established by the European Union Intellectual Property Office (EUIPO) apply. This includes the updated rules and regulations that came into effect with the EU trademark reform. These changes may affect how oppositions, cancellations, and other legal challenges are handled. Trademark owners should be aware of these updated procedures to effectively manage any disputes or challenges to their trademarks filed after this date.

Contested EUTM Applications and International Registrations Designating the EU Filed Before 23/03/2016:

- For EUTM applications and international registrations designating the EU filed before March 23, 2016, the previous legal framework applies. This means that any contested applications or registrations are subject to the rules and procedures that were in place prior to the EU trademark reform. Trademark owners dealing with disputes or challenges for applications filed before this date should consider the older regulations and how they might impact the resolution of such cases.

Extent of use

Criteria for Genuine Use:

Market Position: The trademark owner must show efforts to acquire a commercial position in the market, using advertising campaigns for instance.

Extent of Use: Consider the commercial volume, duration, and frequency of use. Low volume can be offset by regular use.

Evidence: Catalogues and circumstantial evidence can suffice if they show genuine use.

Timeframe: Use doesn’t need to be continuous over five years; it can be at the start or end of the period.

Market Characteristics: Assess turnover and sales in context with market characteristics and product nature.

Single Client Use: Use by a single client can be genuine if commercially justified.

Additional Evidence: Smaller commercial volumes require more evidence to prove genuineness.

Examples of Insufficient Use drawn from various case law:

SMART WATER: Test sales of 15,000 bottles were symbolic for the European market.
NAMMU: Undated photos and affidavits without turnover evidence.
Walzer Traum: Limited sales in a small area despite online advertising.
Sonia Rykiel: Low sales of everyday goods.
AMAZING ELASTIC PLASTIC II: Free samples don’t count as genuine use.
RINASCIMENTO: Single bill of lading insufficient.
GOLF WORLD: Only 14 magazine subscribers in Sweden.
SUSURRO: Low sales in a small region of Spain.
ALFA-REN: Insufficient evidence of distribution.
BE YOU: Low profits over nine months.
TAUTROPFEN CHARISMA: Minimal sales of affordable goods.
Oregon: Single invoice for 180 shoes.
Lynx: Two invoices and undated labels.

Examples of Sufficient Use:

Buffalo Milke: Invoices showing sales in Germany for shoe polish.
Capio: Sales of oxygenators in Finland.
La Mer: Invoices over 33 months showing sales to different customers.
Budweiser: Invoices showing significant beer sales in multiple countries.
Vitafruit: Sales to a single customer in Spain.
Peerstorm: Catalogs showing availability in numerous UK shops.

Nature of use

A- Use of a mark in accordance with its function

Use of Individual Marks

Trademark owners must demonstrate genuine use of their marks in connection with the registered goods or services. This involves establishing a clear link between the mark and the offerings in the market. Evidence can include the mark’s presence on packaging, advertising materials, or invoices related to the goods or services. The use must not be purely illustrative or for promotional purposes.

Use of Collective and Certification Marks

Collective marks serve to distinguish the goods or services of members of an association from those of other undertakings, indicating collective commercial origin. Certification marks, on the other hand, are used to certify that goods or services meet specific standards or possess certain characteristics. Both types of marks must be used in accordance with their essential functions to maintain their validity and can be subject to the same requirements of genuine use as individual marks.

B – Use in the course of trade

Public Use versus Internal Use

Genuine use of a trademark must be public, meaning it should be visible to actual or potential customers. Internal use within a company or group does not qualify as genuine use. The mark must be used in a commercial context aimed at achieving economic advantage, ensuring that it is recognized by the public as a source identifier for the goods or services.

Commercial Activity versus Promotional Activity

Marks used by not-for-profit entities can still constitute genuine use if the intention is to create or maintain an outlet for their goods or services. However, using a mark solely on promotional items (e.g., T-shirts or caps) does not typically count as genuine use unless those items are offered commercially with the intent to compete in the market.

Use in Relation to Goods

The use of a trademark must be directly linked to the goods it represents. This can include affixing the mark to the goods themselves or using it in a way that connects the mark to the goods in the eyes of consumers. The evidence of use must demonstrate that the mark is actively associated with the goods being sold or offered.

Use in Relation to Services

Similar to goods, the trademark must be used in a manner that clearly associates it with the services provided. This means that the mark should be used in advertising, promotional materials, or other contexts that indicate the source of the services. The use must be sufficient to inform consumers about the origin of the services.

Use in Advertising

Use of a trademark in advertising can be considered genuine if the volume and nature of the advertising indicate public use of the mark. This includes not only the presence of the mark in advertisements but also the extent to which the mark is recognized by consumers as a source identifier. The advertising must aim to promote the goods or services associated with the mark.

Use on the Internet

Online use of a trademark must demonstrate a connection between the mark and the goods or services offered. This includes providing evidence of transactions or offerings through a website. Simply having the mark on a website is insufficient; there must be supporting information such as sales figures, customer interactions, or evidence of orders to establish genuine use.

Use of the mark registered or of a variation thereof

When assessing genuine use of a trademark, brand owners must understand that trademarks are typically presented alongside various product information and marketing elements. This context can complicate the verification of whether a mark is used “as registered.”

Key Provision:

Article 18(1)(a) of the EUTMR allows for variations of a trademark that do not alter its distinctive character to be considered valid use. This provision is essential for brand owners as it provides the flexibility to adapt their marks for marketing purposes while still retaining their unique identity.

What to keep in mind:

Simultaneous Use of Independent Marks: Brand owners can use their trademarks alongside other marks (such as house marks or sub-brands) without altering their distinctiveness, provided that the public perceives these marks as independent. This means that the visual and conceptual interactions between the marks should not create an inseparable unit in the eyes of consumers.

Maintaining Distinctive Character: When a mark is used in a form different from its registered version, it is crucial to assess whether the “distinctive essence” of the mark remains intact. This involves evaluating which elements contribute to the mark’s distinctiveness and how any variations might impact consumer perception. Marks with a higher degree of distinctiveness may be less affected by variations than those with limited distinctiveness.

Commercial Context: The assessment of a trademark’s use should consider its actual application in the marketplace. This includes how the mark appears on products, packaging, and advertising materials. Brand owners should be aware that the context in which a mark is used can influence its recognition and distinctiveness.

Use by the proprietor or on its behalf

Use by the Proprietor:
- The trademark owner is generally required to use the mark themselves to fulfill the genuine use requirement (Articles 18(1) and 47(2) EUTMR).
- Use by previous owners during their ownership also counts towards this requirement.
Use by Authorized Third Parties:
- Use of the mark by third parties (e.g., licensees or related companies) is considered authorized if the proprietor has given prior consent. Consent must be explicit before the use; later acceptance is not valid (Article 18(2) EUTMR).
- If a third party uses the mark, it is presumed that the proprietor consented unless contested, placing the burden of proof on the opponent to demonstrate prior consent.
Use of Collective and Certification Marks by Authorized Users:
- Certification marks are used by authorized users to guarantee specific characteristics of goods or services, not by the proprietors themselves (Article 87 EUTMR).
- Collective marks are typically used by members of the proprietor association, and use by any authorized person satisfies the user requirement (Article 78 EUTMR).

Irrelevance of unlawful use

Genuine Use is Based on Actual Use, Not Legality: A mark’s use is considered genuine if it’s factually used, even if it violates laws or regulations.

Deceptive or Unlawful Use Still Counts: Use that is deceptive or under illegal licensing agreements remains genuine for asserting trademark rights in opposition proceedings.

Separate Sanctions for Unlawful Use: Unlawful use can lead to invalidation, revocation, or prohibition, but it doesn’t negate genuine use for trademark protection.

Infringement of Third-Party Rights is Irrelevant: Even if the use infringes on third-party rights, it still qualifies as genuine.

Strategic Use in Opposition Proceedings: Brand owners can defend their trademarks using genuine use claims, even in cases of unlawful or deceptive use, while pursuing sanctions if necessary.

Justification of non-use

Justification of Non-Use: Brand owners can prove justifiable reasons for non-use of their registered marks if circumstances arise independently of their will that obstruct the use of the trademark. However, the interpretation of “proper reasons” is narrow and must demonstrate a direct relationship to the trademark.

Business Risks: Financial difficulties or commercial challenges do not qualify as proper reasons for non-use. Brand owners must understand that economic downturns or internal financial issues are considered a normal part of business operations and do not exempt them from the obligation to use their trademarks.

Government or Court Intervention: Certain government actions, such as import restrictions or regulatory requirements, can justify non-use. Brand owners should be aware that if their ability to use a trademark is hindered by legal or regulatory barriers, this may be recognized as a valid reason for non-use.

Defensive Registrations: The existence of defensive registrations, which are trademarks not intended for use but to protect against others, cannot be used as a justification for non-use. Brand owners should be cautious about relying on defensive registrations as a reason for not using their trademarks.

Force Majeure: Events classified as force majeure that disrupt the normal functioning of a business can justify non-use. Brand owners should document any such occurrences that impact their ability to use their trademarks.

Consequences of Justification of Non-Use: Justified non-use does not equate to actual use and does not reset the grace period for use. Instead, the period of justified non-use merely pauses the five-year period for proving use. Brand owners should be mindful of the duration of justified non-use, as it may affect their ability to meet proof-of-use requirements in the future.

For expert advice on these issues, reach out to us at contact@alatis.eu.