Revocation for non-use of EU trademarks
The regulation establishes the penalty of revocation for an EU trademark which is not effectively used within five years from its registration or whose use is suspended continuously for five years, except for those cases in which the lack of use is justified by a legitimate reason (Articles 18 and 58 of the EU Trademark Regulation, UE 2017/1001, hereafter “EUTMR”).
In order to preserve the exclusive right on a trademark, it is necessary to use it effectively.
The lack of use for a period of five years does not imply as such the revocation of the registration. This should be requested by a third party with an action before the EU Intellectual Property Office (hereafter “EUIPO”) or with a counter-claim in a counterfeiting action before the competent EU Court.
In these actions, the burden of proof regarding the use of the trademark lies with the registration’s owner.
Considering the level of proof required and the strictness of the EUIPO, the assessment of the revocation is certainly, on one hand, an effective and cheap way to obtain the cancelation of third parties’ trademarks. But on the other hand, it could cause serious difficulties to the registration’s owner who – even though actually using the trademark – cannot demonstrate it.
Why is the proof of use so burdensome? To answer this question, it is important to specify what is meant by genuine use of a trademark and how to prove it.
What is meant by genuine use of a trademark?
The case law clarified that the genuine use consists in the real exploitation of the trademark by its owner or with his/her consent, in order to keep or find the market shares for the related products or services, excluding the possibility of a mere symbolic, sporadic or episodic use.
In order for the use to be genuine, the trademark should be used as a distinctive sign in the reference market (not only within the company) for products or services already on sale or whose commercialization – prepared for example with advertisement campaigns – is forthcoming.
In absence of any parameter about a minimum sufficient use established by the case law, what really counts is to be able to provide evidence that the trademark owner actually tried to gain or keep a position in the market, rather than having used the trademark only with the aim to keep the right related to it.
How can you prove the genuine use?
In order for the evidence to be relevant, they should be dated and make reference to a place – besides, of course, to the trademark – and such requirements are checked with particular accuracy by the EUIPO.
The sales invoices clearly reporting an economic transaction, together with products’ catalogues, materials and other data regarding the promotional investments are the main pieces of evidence to demonstrate the effective commercialization of products/services.
In case the invoices do not mention the trademark but the articles’ codes only, it is necessary to cross-check these details with the dated catalogues. Sometimes this requirement results very troublesome for some companies that, even though using the trademark, cannot actually prove it.
Besides the most common evidence of use, it is relevant to show also documents proving the online presence of the trademarks. How are they significant in the probative process?
- Proof of use of the trademark on the Internet
In case only documents taken from the Internet are provided, the evidence related to time and place is less complicated, while the extent can be much more difficult. In fact, Internet transactions tend to eliminate most of the “traditional” evidence of sale (invoices, tax documents, etc.) replacing them with certified payment means, requests and confirmations, transaction registrations, etc. Therefore, it is fundamental to always keep and catalogue these documents in order to be able to demonstrate the sales of a product.
In particular, the only presence of the trademark on a website (or app) is not sufficient to prove its genuine use, unless the website (or app) shows also the place, the period and the extent of the use or unless such information are otherwise provided.
The value of the extracts from the Internet can be strengthened by providing evidence that the website was visited (for example, by conducting traffic analysis) and that products orders were transmitted through the website by a certain number of clients in the reference period (Walzertraum, T-355/09, confirmed by C-141/13). In this regard, other useful pieces of evidence are the management registers of the company web page.
Electronic archives print-outs, such as the Wayback Machine (a free searching technology which keeps documents and information found on the Internet), are considered effective evidence to show how a website looked like in the past, but not the intensity of use of the trademark. Therefore, in this case, it is necessary to support this evidence with proofs coming from alternative sources (19/11/2014, T-344/13, FUNNY BANDS).
Extracts taken from non-modifiable websites are deemed reliable if they contain references to dates and places where, for example, products were commercialized or where the relevant material was used (12/09/2007, T-164/06, BASICS).
On the other hand, information obtained from modifiable websites (Wikipedia, Acronym Finder) are now taken into consideration but should be supported by other evidentiary material (25/09/2018, T-180/17, EM).
Extracts from social media are considered as independent sources (24/10/2017, T-202/16 COFFEE INN) if they include non-modifiable information created by platforms. Evidence such as social media contents which are usually modifiable – “likes, followers, views” etc. – have to be supported by other evidence, like data regarding sales in the reference territory.
Print-outs and screenshots of videos and photos sharing websites are considered if they report the date when the picture or the video were actually viewed or made available to be viewed or downloaded, for example on online platforms (R 462/2017-2, 24/01/2018 NEVILLE). This kind of information can be obtained with analytics reports.
Hyperlinks or URLs are not considered as sufficient evidence, as they could be subject to modifications and removals, so they have to be completed by additional proofs (23/06/2014, R 1836/2013-2, (final), Form of transparent bottle in the shape of a teardrop).
Lastly, the information included in print-outs or screenshots taken from e-commerce platforms are relevant when they report the date in which for example a product was available for sale and they are combined with other proofs of use of the trademark.
Considering the above-mentioned limitations, it is always advisable to support the so-called online evidence with alternative sources.
- Should I prove the use of my trademark in all EU countries?
The use even just in one part of the EU territory can be considered as genuine use, regardless of the political borders of each single country.
However, in the evaluation about the use, the geographical extent is just one of the factors considered by the Office, together with the characteristic of the specific market, the nature of the goods or services, the quantitative extent of the use, its frequency and regularity (19/12/12, C‑149/11, Leno Merken).
For example, the continuous use of a trademark in the city of London and its suburbs for wireless services was deemed sufficient from a geographical point of view, taking into account the extension and the importance of such area in several economic sectors and with regards to the services concerned (30/01/2015, T-278/13, NOW).
Conversely, in another recent case, the use limited to Puglia region of a consumer product like coffee was not deemed as genuine, considering that the limited territorial extension was not balanced by a significant use in terms of volume and intensity (6/6/2019, T-220/18 Torrefazione Caffè Michele Battista Srl).
Does the use of my trademark in a modified form constitute a valid proof of use?
The use of a trademark with some variations compared to the registered form is considered by law as equivalent to the use of the trademark, as long as such modifications do not alter its distinctive character (article 18 EUTMR).
A strict compliance between the used and the registered sign is not necessary, however the difference should concern negligible elements (23/02/2006, T-194/03, Bainbridge).
A recent case having big resonance is the cancelation of Adidas figurative trademark formed by three parallel stripes due to the lack of distinctive character (19/6/2019, T‑307/17, Adidas AG v EUIPO).
The Court established that most of the documents presented by Adidas didn’t regard the trademark concerned, but rather other signs differing from it for the height/width ratio, the reverse color pattern (such as white stripes on black background ), the inclination and number of stripes. With a simple figurative trademark like Adidas’ one, even very small variations can make it difficult for each logo to be linked to the “authorized versions”, thus resulting in a different trademark instead.
This and other recent judgements show how EUIPO is more and more inclined to apply the principle “what you see is what you get” and, as a consequence, to be increasingly strict with regards to the probative elements required by parties.
By the way, the Office has recently published the Common Practice project (also called CP8, result of a shared work by the EU countries Offices and the user associations) establishing the general principles to evaluate when the use of a trademark in a form differing from the registered one actually alters its distinctive character.
Of course, the adoption of this common practice will guarantee more clarity and predictability about the applications of the rules.
Anyways, in order to avoid uncertainties and difficulties to prove the use of a sign, it is undoubtedly advisable to constantly update the trademark portfolio with the various restyling.
Lastly, we will analyse what happens when the trademark owner starts using it again or is able to prove that the lack of use is justified by a valid reason.
Can I avoid revocation if I resume the use of my trademark?
The regulation establishes that the lack of use can be rectified by starting to use the trademark again (Art. 58 EUTMR). Therefore, it is possible to “revitalize” a dormant trademark registration through use, so that the right cannot be revoked.
It is certainly an aspect to be considered if the business changes and some brands may gain significance again.
What are the legitimate reasons justifying the lack of use of my trademark?
There is no revocation when the lack of use is justified by reasons which are independent of the owner’s will. This can happen for example in case of wars, natural disasters, refusal to grant administrative authorizations and presumably government measures like the lockdown due to COVID-19 health emergency, even considering that many EU countries ordered a suspension of revocation terms also in respect to trademarks.
Ascertaining the revocation is surely an effective tool to obtain the cancelation of third parties trademarks .
From the point of view of EU trademark owners who could be subject to such action, it is absolutely fundamental to organize the following activities:
- Constantly reviewing and assessing the trademark portfolio, in order to identify with the trademark attorney those signs which could be subject to revocation and the possible strategies for new registrations;
- In case of doubts regarding the genuine use of the trademark, strengthening the protection with additional national or international registration in the key EU countries;
- Always registering any trademark restyling;
- Regularly keeping record of all pieces of evidence by trademark, type and year. If possible, mentioning the trademark in the invoices, putting a date on catalogues, brochures and price lists;
- In order to prove the use on the Internet, keeping management registers of webpages, analytic reports, certified payment receipts and online transactions registrations.
In order to build a protection strategy entailing the specific business needs and a proper portfolio management, it is always advisable to seek an expert’s advice.