EU Trade Mark Reforms - Proof of Use in Oppositions

In our continuing series on the reformed European Union (“EU”) trade mark Regulation coming into effect on 23 March 2016, we briefly introduce how proof of use requirements under the new Regulation will impact older EU trade mark registrations being relied upon in EU trade mark oppositions. An applicant who finds its pending trade mark application the subject of an opposition can compel the opponent to prove that the trade mark being relied upon in the opposition has been in “genuine use” if that trade mark was registered five or more years ago. If the proprietor fails to make a proper showing of said genuine use, either by itself or through an authorised third party, of the mark (as registered or in a form where the differences do not alter the distinctive character of the mark) for the relevant goods and/or services, or cannot prove justifiable reasons for non-use, the EU Trade Mark Office may decide to not take into account the earlier relied-upon registration for the purposes of the opposition. In some cases, this may mean that the opposition has no basis and could be rejected in its entirety. Currently, the period for demonstrating “genuine use” ends with the five years leading up to pending EU application’s publication date. Thus, for an application published on 31 January 2016, the opponent would have the burden of proving that it genuinely used its trade mark between 31 January 2011 and 30 January 2016 or that it had excusable reasons for not using its trade mark during that period. Under the new Regulation, however, that five year period for demonstrating genuine use will now end with the pending application’s filing date or priority date, whichever is earlier. In some instances, this means that the proprietor will need to have used its trade mark for a considerably longer period of time than under the current Regulation. A proprietor who relies on an older EU registration in an opposition should exercise care and be diligent in safeguarding its own rights before initiating any type of dispute. Among other things, proprietors should:

maintain detailed records concerning use of its trade mark so as to not be caught off-guard when attempting to enforce those rights; and
prior to 24 September 2016, ensure that the specification of its older EU registration accurately reflects the scope of commercial use of that trade mark (see our earlier post here).

Rest assured that Stobbs is here to help if you and your EU Trade Mark portfolio are not prepared for all of the changes coming under the EU Trade Mark Reform. Feel free to contact one of our legal advisors if you have any questions or concerns.

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