Proof of use, proof of what

Owners of registered trade marks in the UK and EU have to use their trade mark if they want to be able to enforce it. That being said, there is a five year “grace period” from filing in which it is not necessary to demonstrate use of the trade mark to enforce it.

After the five-year grace period, if a trade mark owner wants to file an opposition or look to enforce the trade mark in a litigation context, the owner will need to show that the trade mark has been put to use to have an enforceable right.

The reason for having a proof of use requirement is, essentially, to restrict the number of (enforceable) trade marks and subsequently reduce the number of disputes. Of course, the proof of use requirement creates a lot of disputes on its own accord. It is also to be noted that the UK / EU Intellectual Property Offices and Courts will not make its own enquiry into whether the trade mark has been used, instead the trade mark applicant or alleged infringer must make an express request for “proof of use”, once requested a number of legal mechanisms kick in. So, what exactly is it and what does it mean? Well, I am glad you asked:

There are a number of long legal cases that deal with the topic and without wanting to bore you I have prepared this (hopefully) short summary. The trade mark must be put to “genuine use”, as the term suggests genuine use means actual use of the trade mark. It cannot be token use, and essentially this means that the use must be of the trade mark on the market for the goods / services it is registered for. That being said, whilst not an explicit minimum threshold, in a decision of the EU Intellectual Property Office’s Opposition Division eleven invoices showing that 13 units of perfumery goods sold in Spain between 2003 and 2005, totaling EUR 84.63, was deemed insufficient proof of genuine use of the trade mark.

On the other hand, the sale of approximately 1,000 miniature toy vehicles was sufficient. Overall, if I was the owner of a trade mark (which I am :)) I would make sure to use it or loose it!

Sam O’Toole, Solicitor