Q&A VII – On cancelation due to non-use

October 6, 2021 at 12:06 pm

We are happy to continue our Q&A series, where we answer 3-5 questions our clients often have on a specific topic and share it with you. We hope you will enjoy!

Q1: Do we have to use our trade marks and show regular proof?

By Law, yes, it is predicted that the owners have to use their trade mark rights.

Still, however, there is no obligation for showing regular proof of doing so – it is only when it comes to certain situations when the use of a mark is questioned (e.g. when filing an opposition or requesting an annulment )

Q2: What is and isn’t use?

Non-use means no or no significant use in the market for 5 years after registration date or from the date of the last known use, unless there were objective obstacles to the use such as import suspension, state sanctions or other state regulations.

Use can be marking the goods and services with the similar mark, not differing in the distinctive trade mark elements, marking the goods for export only, however marketing the goods/services that cannot be obtained/used or renewing the trade mark and signing assignment or license contracts is not considered use.

Q3: What are the consequences of non-use?

Apart from the obvious – the trade mark in question being vulnerable to the cancellation due to non-use motion, as mentioned above, use  needs to be proven when filing of the opposition (only if the other side requests it) or has to be proven at the time of the request for annulment.

Q4: How to rectify this situation?

If there was no use in the 5 year term or even longer, it is unlikely that the owner will simply start using the trade mark – often there is a subjective obstacle to expansion, such as local financial, political or socio-economic reasons for not doing so in all that time. If the owner would still like to protect their interest for the future and ever changing global climate, it is advised to closely take stock of their core IP portfolio and foreseen expansion/export strategy and decide 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 a chance to adjust the view of the mark and/or the list of goods and services.

TAGS: Q&A, cancelation due to non-use, trade marks

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