This article delves into the specific types of evidence required to demonstrate that you have genuinely used your mark and of the importance of maintaining records of use of your mark.
Once you have managed to obtain registered trade mark protection for your mark, you might be thinking “end of story”. However, this may not necessarily be the case. Your UK or European Union Trade Mark (“EUTM”) registration might be cancelled if you are not able to show that you have put your mark to genuine use for a continuous period of five years post-registration, and that you have no proper reasons for not using your mark during this period.
Who can cancel your mark on the basis of non-use?
Anyone can apply to cancel your mark, five years post-registration, on the basis of non-use. If your registered right is subject to a non-use revocation action, you will need to prove that you have in fact used your mark within the relevant period deemed by the relevant trade mark Registry as the “non-use period”, unless you have a proper reason for not using your mark within the relevant period.
Why does a mark become vulnerable to cancellation after five years post-registration?
This is largely to ensure that an owner of a trade mark registration is not able to hold onto a monopoly protection over a mark that they have no interest in using for the goods and services for which the mark has been registered.
What constitutes as genuine use?
Genuine use means actual and sufficient use of the mark; you must be able to demonstrate that you have used the mark in the relevant market in which you are providing your goods and/or services. Where you have a UK registered right, you will need to show use of the mark in the UK. Ideally, the evidence should show use of the mark throughout the UK, rather than just use in one location within the UK. In the case of a EUTM registered right, you should provide evidence of use of your mark throughout a significant proportion of the EU market; evidence of use in one Member State may not be enough to satisfy this requirement. The evidence of use should show use of the mark in the course of trade, showing that you are trying to create a market share by selling your goods or providing your services under your mark, rather than use of the mark solely aimed at maintaining your registration (which is referred to as “token use”).
What kinds of evidence is required to show genuine use of a mark?
While it is impossible to provide an exhaustive list of what can constitute evidence of use, we are able to provide some tips based on key cases in recent years.
In Sipral World SL v European Union Intellectual Property Office (“EUIPO”) (2018), Sipral World SL was unsuccessful in maintaining its registration for “DOLFINA”, on the basis that the evidence submitted did not sufficiently show that it had used its mark for the goods covered by the registration. Specifically, the invoices, indicating that the company had sold goods under the mark, did not show to whom the sales had been made (the purchasers’ names had been redacted) and so it was not possible to ascertain whether the sales of goods had been made to consumers or to Sipral's licensees.
Therefore, we suggest that when providing invoices as evidence of use of your mark, ensure that the invoices contain the following:
(a) The trade mark in question;
(b) The specific goods or services that have been sold or provided.
(c) A breakdown of the sales figures for each particular good/service sold or provided (where possible).
Providing evidence in the form of invoices or annual sales figures that show a breakdown of the goods and or services sold or provided under the mark, as well as the jurisdiction in which they have been sold or provided, (particularly in the case of an EUTM registration), should help strengthen your case in maintaining your registration.
The EU General Court also held in the Sipral case that the evidence submitted did not enable the Court to determine whether the sales of goods under the mark at issue had been made within the relevant period of claimed non-use. This serves as a useful reminder to make sure that the evidence provided clearly shows you have used your mark with the relevant period of non-use as specified by the relevant trade mark Registry.
2. Marketing materials
Another case that provides guidance as to what types of evidence to provide, is
Supermac's (Holdings) Ltd v McDonalds International Property Company, Ltd (2019), in which the EUIPO revoked McDonalds EUTM registration for “BIG MAC”.
Amongst other forms of evidence of use submitted, McDonalds provided brochures, printouts and advertising material of Big Mac burgers, and printouts of the company’s website in the EU and of the Big Mac Wikipedia Page.
Whilst the evidence showed that McDonalds had certainly used the mark in the relevant period, the EUIPO held that McDonalds failed to address the extent to which the mark had been used. The advertising material (including the brochures, printouts and posters of the Big Mac burgers) did not provide any information regarding how many of the Big Mac burgers were purchased within the relevant period. The printouts of the mark being used on the company’s website did not indicate how much web-traffic the website had been experiencing in the relevant period.
So here we can see that statistical data, such as website traffic, would certainly be a stronger form of evidence use of a trade mark, as opposed to a simple screenshot of the mark being used on your website within the relevant period. Also, any data on the number of sales made through your website within the relevant period may also help to strengthen your case.
Supermac was also successful in partially revoking McDonald’s EUTM registration for “Mc”, in July 2019.
McDonalds was unable to show use of the “Mc” mark alone but only in connection with other words, for example, MCNUGGETS and MCFLURRY. The only way that McDonalds could rely on this evidence was to show that the use of the “Mc” marks with the additional words did not alter the “Mc” mark’s distinctive character, such as to render the mark as a completely new mark in itself. For example, the use of “Mc” with Nuggets, for chicken nuggets, was held not to alter the distinctive character of the “Mc” mark (as the additional word “Nuggets” is descriptive of chicken nuggets for which the mark is being used). However, it was held that the additional words, such as FLURRY and DONALDS (MCFLURRY/MCDONALDS) did alter the distinctive character of the “Mc” mark and so evidence of use of these “Mc” - prefixed marks was not sufficient for the purposes of maintaining the “Mc” registration for which these marks were being used.
This case highlights the importance of providing evidence of use of the mark as it has been registered. If you are using your mark in a variation different to how it has been registered, be careful that this does not significantly alter the distinctive character of the mark so as to ensure your use of the mark sufficiently validates your registration. If you are not sure as to whether your current use of your mark is sufficient to validate your registrations, feel free to contact one of our attorneys for further advice. Where you are selling various goods or providing services under both a word mark and a logo mark, make sure you collate evidence of use of both marks separately in relation to all of your key goods covered by the registrations. Being able to show use of the marks alone should, again, help strengthen your position should your marks ever become subject to non-use revocation actions.
* Make sure you are using your mark in the relevant territory/territories in which you have registered protection. For EUTM registrations, use of your mark throughout more than one territory should put you in a better position for showing use throughout a significant proportion of the EU market (although whether or not you satisfy this requirement does not depend solely on the number of Member States in which you can show use of your mark but will depend on a variety of factors, including how much you have used your mark).
* Archive as much usage of your mark as possible irrespective of how well-known your brand might be. This can be as simple as archiving invoices bearing the mark on a monthly-basis, identifying and collating website and social media traffic and engagement on a monthly or annual basis, archiving publications (both internal and third party) showing use of your mark.
* When providing sales figures or invoices as evidence of use, try to provide a breakdown of the specific goods or services sold within the time period, as well as to who you have sold your goods or services (where possible).
* In non-use revocation proceedings, ensure that your evidence shows use of the mark within the relevant period as defined by the Registry.
* Where you have provided evidence of online use of your mark, think about whether you might be able to bolster the strength of your evidence by also providing statistical data showing how much web-traffic your website has had, and how many online sales there have been, within the relevant period as specified by the Registry.
This is a complex area of law and we, Stobbs, are able to provide you with practical and cost-effective advice in choosing the most suitable evidence for your case.