Q&A V – What if we are not using our trade mark?

November 30, 2020 at 7:21 am

Each month we answer 3-5 questions our clients most often have and share it with you in our Q&A series.

Q1: By law, is use disclaimer filed with the IPOs?

No, there are no such requirements in any of the 8 jurisdictions.

Q2: What is considered use?

Usually proof that we submit are simple store receipts showing that date and products bought, and often we are supplied with paperwork showing the amounts of products shipped/sold in the past years on the market, by our clients.

Proof of use still has to be tied to the market itself – so the possibility of ‘online use’ is still inadmissible, neither are ads and brochures alone – as they still do not let you experience the product or the service advertised. 

Proof is tied to use on the market in the past 5 years and cannot be requested if 5 years have not passed from the registration date.

Q3: Is use required by law?

Yes. Although there is no automatic mechanism to check/claim use, a trade mark owner is required by law to use their mark.

Q4: What are the consequences of not using my trade mark?

The consequences are twofold:

1. Being unable to file oppositions against later applications

Potential opposition procedures against later rights enable the later right holder to demand proof of use – putting the client in the position of not being able to oppose new applications.

2. Little to no means of defence against blatant copying

Again, if there is no use in the market – someone applying for a highly similar or identical mark could not be stopped neither by the opposition (for the reason listed above), nor could be pursued for unfair competition, either.

Q5: I have not been using my TM, what should I do?

If for any reason you have not been using your registered trade mark in the past 5 years or more, this is the perfect time for taking stock of your firm’s core IP portfolio and foreseen expansion/export strategy and deciding if some of the most valuable brands that are currently not in use should in fact be protected again by filing fresh TM applications.

This could potentially offer you a chance to adjust the view of the mark and/or the list of goods and services.

We are happy to offer more insight and IP audits in all jurisdictions and give you our guidance on the best course of action for your firm!

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