Discuss the requirement of use in maintaining a Trade Mark Registration…
Discuss the requirement of use in maintaining a Trade Mark Registration under European law
non-use is one of the grounds for revocation
Section 46(1)(a) and 46(1)(b) 1994 Act and section 50(1) CTMR
relevant period of non-use
acceptable reasons for non-use
Circumstances arising independently of the will of the proprietor
a sufficiently direct relationship between the obstacle and non-use of the mark
Obstacle must render use impossible or unreasonable
In some circumstances, there may be a justifiable reason why the mark cannot be used. For example, if the mark is to be used in relation to a pharmaceutical product and approval for the pharmaceutical has been sought in good time from the appropriate regulatory authority but has not yet been granted, this may be accepted as a valid reason for non-use. However if product bearing the mark simply did not sell, this would not be a valid reason.
What is use?
Use as a trade mark
Use via associated goods
If there has been valid use on some of the goods / services, then such use will be ineffective as regards the remaining goods / services, unless they are closely related. So if the mark is registered for cakes and soft drinks, and the only use is on lemonade, then the use would normally be considered use in relation to soft drinks in general, but not in relation to cakes.
Ansul v Ajax
Use by a licensee
use must be made by the proprietor or with their consent
Hebrew University v Continential Shelf and the use of the mark EINSTEIN which had been used in relation to sew-in labels and invoices by a sister company of the trademark proprietor
Initially held that for their to be genuine consent, the trade mark proprietor had to exercise some degree of control
On appeal, the Appointed Person held that there was non requirement for the proprietor to control the quality of the goods, so long as they had given their consent.
NOTE: not all uses of a trade mark that would infringe if made by a third party amount to use for the purpose of defending against an application for revocation
Use needs to be genuine commercial use and not just token use, and needs to be in the country in which the mark is registered; in the case of an EUTM, a reasonable amount of use in one EU country may suffice depending upon the country concerned. The amount and frequency of use will depend upon the nature of the goods or services; for example the sale of two or three cases of tinned food over a five year period would probably not be considered sufficient, whereas the sale of two or three ships would. For many countries, applying the mark in a given country to goods for export counts as use, even if the goods are not put on the market in that country.
Two understandings of genuine use have been employed in the case law
any use that is not artificial, ficticuous, or merely to retain the mark.
Test = whether there was honest intent
Court of Justice has adopted an approach that is much closer to this subjective test
Ansul v Ajax
notion of genuine use required a uniform interpretation throughout the community
token use solely serving to preserve rights was not genuine use
genuine use must eb consistent with the essential function of the trade mark
Commercial exploitation of the mark must be real
use in relation to components or after sales services could be use that 'related to' goods even though the good for which the mark was registered were no longer being sold.
Some aspects of the courts judgement in Ansul were vague. These were clarified in La Mer v Goemar
was genuine use sufficient to resist a section 46 revocation of the sign LABORATORIE LA MER in relation the the sale of cosmetics
The proprietor of the mark was a small french company that had made a small number of sales to a Scottish Agent
The applicant for revocation was Huber Laboratories who wanted to launch a large m=number of skin care products under the La Mer sign.
There was no suggestion that the sales by Goemar were token.
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demands real substantial use in the marketplace
Test = ordinary commercial standards
Use in relation to the goods or services for which the mark is registered
Ansul v Ajax
Animated Music Ltd
Anheuser Busch v Bedejovicky Budvar
Colloseum Holding (LEVIS)
Specsavers v ASDA
Hebrew University of Jeruselum v Continental Shelf
La Mer v Goemar
Elle Trade Marks
Armin Haupl v Lidl
Why is important to show use?
risk of a non-use cancellation action – If a registered EUTM or UK trade mark is not used within five years of being put on the Register or if subsequently it has not been used for five years then third parties can seek to cancel it on the grounds of non-use. The same also applies to UK and EU designations of International trade mark registrations (as from the date of protection).
So that a registration can be used to attack a third party application or registration – If a registration is relied upon as a ground for attacking a third party mark in a UK or a EUTM opposition or cancellation action and the registration has been on the Register for more than five years, then it is almost certain that the party whose mark is being attacked will, if the opposition or cancellation proceeds, ask for proof that the mark has been used in the preceding five years. If this cannot be satisfactorily shown, then the registration concerned will be disregarded in the proceedings as regards the goods / services on which use cannot be proved, unless there is a satisfactory reason for non-use. Such “proof of use” can also be demanded of a proprietor of an EUTM being relied upon as the basis of an infringement action.
Because of the risk of counterattack – In opposition or infringement proceedings the defendant may counterattack the trade mark registration if it is thought that it might be vulnerable on the grounds of non-use.
In order to maintain the registration – In some countries, for example the United States, it is necessary periodically to prove use in order to maintain a trade mark registration
Why is it important that non-use is a grounds for revocation?
Honest cuncurrent use