Not everyone knows that once a trademark has been filed and registered, it must be put into effective use by its owner: the law - both national and European - provides for an initial grace period of five years from registration, after which the owner may be required to prove the effective use of his trademark.
Evidence of use can be requested both in opposition proceedings by the trademark applicant and in opposition proceedings by the trademark applicant, with the consequence that in the absence of useful evidence, the opposition is automatically rejected.
Similarly, the evidence of use of the trademark could be requested in the framework of a revocation procedure for non-use provided for at Community level by articles 18 and 58 European Union Trademark Regulation, EU 2017/1001. Also in this case the consequences are far from trivial for the trademark owner, since if the administrative judge considers the evidence insufficient, the trademark would be declared null and void as of the date of the request for revocation and therefore cancelled from the register.
Therefore, the use of the trademark is fundamental even in all cases in which the trademark is registered: it is not sufficient to have registered the trademark in a series of product classes in order to ensure the widest possible protection, if this registration does not correspond to a genuine use of the trademark within the terms of the law.
It is therefore particularly important for the owner to collect proof of use over time, especially once the five-year grace period has expired.
It is also very important to know what evidence of use is relevant to the administrative judge.
One of the most important pieces of evidence of use are sales invoices.
As repeatedly stated by the courts such invoices must show significant and frequent volumes of sales during the relevant period (five years prior to the application for nullity or, in opposition proceedings, from the time of publication).
It should be noted that offers to sell products bearing the contested trademark on websites are not sufficient in themselves to demonstrate actual use, at most they may be relevant together with other elements such as, for example, the production of supporting documents, packaging, labels, price lists, catalogs, invoices, photographs, newspaper advertisements.
On this point, the EU Court of First Instance recently expressed its opinion in case T-1/20 of October 13, 2021, rejecting the appeal of the company Mi Indutries Inc., a manufacturer of organic pet foods, confirming the decision of the Board of Appeal of the EUIPO, which had held that the extracts from the Internet site "Amazon.co.uk" where the goods bearing the contested trademark were put up for sale simply showed that the goods in question had been put up for sale, without however proving that they had actually been sold and without providing any information on the volume of any sales.
According to the case-law, the actual use of a trademark cannot be proven by probability or presumption, but must be based on concrete and objective elements that demonstrate the actual and sufficient use of the trademark in the market concerned.
According to the Implementing Regulations, furthermore, the evidence of use must cover the place, duration, extent and nature of the use that has been made of the contested trademark. It is also essential that the evidence covers the relevant five-year period: further evidence outside this period will only be considered secondarily.
Furthermore, the condition relating to the actual use of the trademark requires that it, as protected in the relevant territory, be used publicly and externally. In this respect, the Court made it clear that not only sales to final consumers but also to industrial customers and professional users (B2B sales) are relevant.
Finally, the Court pointed out that even if it is not necessary for the owner to prove constant and significant use over the entire five-year period in order to escape sanctions, the obvious absence of evidence for a significant part of the period means that the use is considered insufficient.
Intellectual Property