Serious use

The registration of a trademark confers on its owner a monopoly of exploitation which allows him to freely exploit his trademark in the territory in which it is registered (principle of territoriality) and for the goods and/or services covered by the registration (principle of speciality).

This monopoly also allows the owner to oppose any unauthorized use of a similar sign by a third party.

If the owner of the trademark has intellectual property rights on it, it is still necessary that he exploits it in an effective and serious way.

Indeed, the article L.714-5 of the Intellectual Property Code provides that “The owner of a mark who, without good reason, has not made genuine use of it, in respect of the goods or services for which the mark is registered, for an uninterrupted period of five years, shall forfeit his rights.”

The article 58.1. European Union Trade Mark Regulation (EUTR) No. 2017/1001 provides that: “The owner of the European Union trademark shall be declared to have forfeited his rights […].

(a) if, for an uninterrupted period of five years, the mark has not been put to genuine use in the Union in connection with the goods or services for which it is registered, and there are no proper reasons for the non-use.”

Thus, a trademark that has been registered for more than five years may be cancelled, at the request of any third party, if its owner has not actually used it during the five years preceding the filing of the revocation action.

Lapse for non-use thus makes it possible to limit the number of trademarks on the registers and to increase the number of signs available on a market.

Proof of genuine use is incumbent on the owner of the trademark and can be provided by any means, in particular through invoices, but also through promotional and communication elements.

The use must be serious, i.e. public, real and not fictitious or symbolic (Cass. com., January 31, 2012,n°11-14.317). Moreover, the use must be consistent with the essential function of the trademark, which is to guarantee to the consumer the origin of a product or service from those of another origin (Cass. com., April 28, 2004, n°02-10.505).

To establish use, the evidence should :

Be correctly dated and within the reference period;
Concerns all goods and/or services designated by the trademark. Failure to provide proof of use for each of the goods and/or services will result in the cancellation of the trademark for the goods and/or services.

Sometimes the trademark is used in a modified manner with respect to the registration , in order to be considered as use of the registered trademark, the trademark used must differ from it only in elements that do not alter its distinctive character.

Some other countries take a different approach to usage.

For example, in the United States, the system in place is one that recognizes use over deposit.

Thus, this implies that at the filing stage the applicant can rely on the following grounds:

Use of the trademark: in this case, the applicant must provide proof of use of the trademark at the filing stage ;
Intent to use the mark.

In any case, in order to keep the trademark in force, the trademark owner will have to justify the use of his trademark on a regular basis and sign declarations of use (Affidavit) for this purpose. Otherwise, the protection of the trademark cannot be maintained.

This also implies that in case of use opposing a later filing, the one who will have started to use will have prior rights.

Serious use and European Union trademark

Genuine use of a European Union trademark must be understood as use of the trademark by a significant part of the public concerned by the trademark and in a substantial part of the territory of the Community.

The question then arose as to the extent of this use on the territory of the European Union.

The Court of First Instance of the European Union considered that the operation in a single Member State was sufficient, since it was necessary to take into account both the characteristics of the products and/or services concerned in the relevant market and the characteristics of that market itself.

The fact that the European market for dressing materials extends to other Member States than Spain, where a use is demonstrated, does not therefore preclude as a matter of principle the conclusion that such use may be serious (EU T, 7 November 2019, Case T-380/18) :

“the territorial extent is only one factor among others to be taken into account in assessing the seriousness of the use of a European Union trademark […]. In fact, it is not necessary for the use of a European Union trademark to be geographically extensive in order to be qualified as genuine, insofar as such qualification depends on the characteristics of the goods or services concerned in the corresponding market and, more generally, on all the facts and circumstances likely to show that the commercial exploitation of that trademark makes it possible to create or maintain market shares for the goods or services for which it was registered […].

Furthermore, the possibility that the mark in question has been used in the territory of a single Member State must not be excluded, since the borders of the Member States must be disregarded and the characteristics of the goods or services concerned must be taken into account. […]

it is irrelevant whether a Union trademark has been used in one or more Member States. What matters is the impact of the use on the domestic market; more precisely, whether that use is sufficient to maintain or create market shares on that market for the goods or services designated by the mark and whether it contributes to a significant commercial presence of the goods or services on that market …

Indeed, it should be considered that the use of an earlier EU trademark in a Member State is likely to produce effects on the internal market, for example, by ensuring the reputation of the goods – in a commercially significant way – among actors in a market larger than the one corresponding to the territory where the trademark is used.”

Update on the takeover of the brand

Sending a letter requesting proof of use prevents the owner of the potentially challenged mark from resuming use of its mark. Indeed, paragraph 4 of article L.716-3 of the Intellectual Property Code provides that :

“Genuine use of the mark begun or resumed after the five-year period referred to in the first paragraph of Article L. 714-5 shall not be an obstacle to revocation if such use was begun or resumed within a period of three months preceding the application for revocation and after the owner learned that the application for revocation might be filed.”

Update on China’s defense strategies

Lapse action can be filed against Chinese trademarks after 3 years from their registration.

Unlike INPI and EUIPO, when examining a trademark application, the Chinese Office conducts a prior art search and can oppose the registration of a trademark on the basis of an identical or similar prior right.

If the Office opposes to the applicant an earlier trademark registered for more than 3 years and that it does not seem to be exploited by its owner, it is advisable to introduce an action for revocation against it and to try to obtain its cancellation in order to overcome the Office’s refusal.

However, this will not interrupt the examination process of a trademark and may require a trademark owner to re-file its trademark to prevent a third party from doing so in the interim.

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