In January 2019 all major media outlets reported that McDonald’s EU trademark BIG MAC was cancelled for lack of use. EU trademark law, as well as national trademark laws, state that if you have registered a trademark, it becomes subject to a “use obligation” five years after being registered. This means that in order to get full trademark protection and to be able to enforce your trademark against others, you must actually use it. If you don’t, your rights will be severely limited and you may even lose the trademark completely.
During the first five years of the registration there is no obligation that you use the trademark. This means that you can register your trademark even before you start using it. You have five years of full protection after the registration regardless of whether you use your trademark or not.
Why do you have to use your trademark?
There are over half a million trademark applications filed annually in EU countries. The national and EU trademark registers and the EU register are getting crowded. To keep the system working, it is important to make sure that those trademarks that have not been used for genuine economic activity for a long time cannot prevent the creation of new brands and registration of new trademarks. It’s like cleaning your closet. If you have clothes that you have not worn for 5 years, it might be time to throw them away and make space for new ones.
The requirement for proper trademark use
For the trademark use to be sufficient, it needs to be actual non-token use. You must genuinely use your trademark to offer products or services to customers. The use must be public and outwardly.
The use must relate to the goods and services. This can be for example use of the mark on the product packaging or advertising. Because services do not have any physical embodiment, it is sufficient to show the use of the mark in connection with services, for example on business correspondence, advertising, invoices, business cards, et cetera.
The use does not have to be particularly voluminous as the intention is not to evaluate the commercial success of the trademark, but rather that it has been genuinely used in commercial activity. Use of the trademark on promotional articles is not sufficient. If your trademark is registered for software development, handing out branded t-shirts or pens in a tradeshow is not use of the trademark. The same is the case if the employees wear branded hoodies. It is not counted as use of the mark for software services, although it may promote such services. The evidence of use is generally relevant only if it relates to those goods and services that are covered by the registration.
The use must take place in the territory where the trademark is registered. For EU trademarks, the use must take place within the European Union. Since the EU is considered to be a single market, territorial borders are irrelevant. It is not required that the trademark is used in all EU countries, or even in a substantial part of the EU. It is possible that genuine use is established even if the mark is used in only one country, or even only in one big city.
The use must take place within a particular five year period. In opposition proceedings the five year period is counted backwards from the application date of the trademark that is being opposed. In revocation proceedings the use must relate to the previous five years before the start of the revocation action.
The trademark must be used almost exactly as it is registered. Only slight and negligible variations that do not alter the distinctiveness of the mark are acceptable. For example, the use of trademark PELASPAN PAC was considered acceptable use of the registered mark PELASPAN-PAC, but the use of LA SPOSA trademark was not considered use of the registered mark SP LA SPOSA.
The use must relate to the goods and services that are covered by the registration. If the trademark is registered for clothing and it is used for shoes, that does not count as use of the registered trademark. If the trademark is registered for many goods and services, but used for only some of them, it will be partially cancelled or in case of opposition, the registration is deemed effective only with respect to those goods and services for which genuine use is established.
Sometimes there may be justifiable reasons for non-use. In such cases the trademark cannot be cancelled or its effectiveness limited in opposition cases. Having said that, it is very difficult to establish justifiable reasons for non-use. Normal commercial difficulties or hardships are not proper reasons. There are two main situations that are considered acceptable: government requirements and import restrictions. Regarding the former, if Covid-19 restrictions mandated the closure of nightclubs or restaurants for five years, that would count as a justifiable reason for non-use of the trademarks in these fields. Regarding the latter, if the EU imposes sanctions and prohibits the import of goods originating from a certain country or territory, it is possible that trademark owners from those countries could rely on the import restrictions as proper reasons for non-use of their trademarks in the EU.
Assessing genuine use
The evidence of use is assessed as a whole, taking all relevant considerations into account. Each piece of evidence is assessed in conjunction with other pieces of evidence.
Typical materials that can be presented to show use of the mark include the following:
- Brochures, catalogues and leaflets
- Photos from trade shows and other events
- Newspaper articles and mentions in social media
The use of your trademark cannot be presumed based on common knowledge or other personal experience. No doubt the officials in EUIPO who cancelled McDonald’s BIG MAC trademark knew in their personal experience that the trademark BIG MAC was heavily used throughout Europe. Without a doubt, many of them had eaten BIG MAC hamburgers during the relevant five year period.
What are the consequences of non-use?
If your trademark has not been used for more than five years, it is difficult to enforce it against others in opposition or infringement proceedings.
If you oppose a later trademark and the applicant requests you to prove the use of your trademark, your registration will be ineffective (not taken into account in the proceedings) if you cannot show proper use of the mark. The registration will remain valid, but it will have no effect in the opposition proceedings. You cannot win the opposition if your trademark is under use obligation and you cannot prove the use of your mark if requested by the other party.
Similarly, other companies can seek the cancellation of your trademark based on non-use. If that’s the case, your registration will cease to exist and your trademark rights will no longer be in force. Cancellation actions are most common as counter-measures in trademark infringement cases. If you accuse somebody of trademark infringement, you should be prepared to defend your own rights in cancellation proceedings.
What should you do?
Use your trademark exactly as it is registered, and use it for those goods and services that it is registered for. Also, remember to document your use periodically.
Finally, If your trademark changes (for example, you update your logo), remember to register the updated version as the use of the new version might not satisfy the use obligation of the older trademark.