Use it or lose it, the implications of not using a trade mark
Written by Samuel O'Toole on 13 December 2018« Return to Reading Room
Once registered, the work of a trade mark proprietor does not end. In fact it is only just the beginning. In addition to keeping an eye on trade mark applicants attempting to register identical or similar marks to your own, the registration needs to be put to genuine use.
The legal framework
In The London Taxi Corporation Limited v Frazer-Nash Research Limited & Ecotive Limited,  EWHC 52, Arnold J provided an overview of the legal framework surrounding ‘genuine use’ (see paragraph 217 of the Judgment). The key points to take away from this judgment are that:
First and foremost, genuine use means actual use of the trade mark by the proprietor or by a third party with authority to use the mark. But what does this mean? The use must be more than merely token, that is to say, serving solely to preserve the rights conferred by the registration of the mark.
The use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of the goods or services to the consumer or end user by enabling him to distinguish the goods or services from others which have another origin.
Use of the mark must relate to goods or services which are already marketed or which are about to be marketed and for which preparations to secure customers are under way, particularly in the form of advertising campaigns. It should be noted that internal use by the proprietor does not suffice. Nor does the distribution of promotional items as a reward for the purchase of other goods and to encourage the sale of the latter. But use by a non-profit making association can constitute genuine use.
The use must be by way of real commercial exploitation of the mark on the market for the relevant goods or services, that is to say, use in accordance with the commercial raison d'être of the mark, which is to create or preserve an outlet for the goods or services that bear the mark.
All the relevant facts and circumstances must be taken into account in determining whether there is real commercial exploitation of the mark, including: (a) whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods and services in question; (b) the nature of the goods or services; (c) the characteristics of the market concerned; (d) the scale and frequency of use of the mark; (e) whether the mark is used for the purpose of marketing all the goods and services covered by the mark or just some of them; (f) the evidence that the proprietor is able to provide; and (g) the territorial extent of the use.
Use of the mark need not always be quantitatively significant for it to be deemed genuine. Even minimal use may qualify as genuine use if it is deemed to be justified in the economic sector concerned for the purpose of creating or preserving market share for the relevant goods or services. For example, use of the mark by a single client which imports the relevant goods can be sufficient to demonstrate that such use is genuine, if it appears that the import operation has a genuine commercial justification for the proprietor. Thus there is no de minimis rule.
It is not the case that every proven commercial use of the mark may automatically be deemed to constitute genuine use.
It would also be prudent to point out that that the proprietor of the registration bears the onus to show use of the registration, this is provided for by way of section 100 of the Trade Marks Act 1994 (‘the Act’).
There are two strands to proof of use, the first is its application in trade mark opposition proceedings and the second is its application in trade mark cancellation proceedings.
Starting with trade mark opposition proceedings, proof of use (or lack thereof) can be a good defence that will work on the applicant’s behalf. This is because section 6A(3)(a) of the Act provides the earlier trade mark must have been put to genuine use in the UK, in the relevant period, and “in relation to the goods or services for which it is registered.” The relevant period is five years ending with the date of publication of the application the earlier trade mark has been put to genuine use in the UK. If the earlier trade mark has not been put to genuine use in the UK, the Registrar will not refuse to register the application by reason of the earlier mark.
Put simply, this means that if a registration has not been used for a period of five years it will not be able to block the registration of trade mark applications by way of opposition proceedings.
Trade mark cancellation actions
The second application of ‘proof of use’ is by way of trade mark cancellation proceedings. Section 44 of the Act, provides that third party can deprive a trade mark owner of their registered rights in a mark by obtaining revocation of the mark. It should be mentioned that revocation proceedings can be made by way of a stand-alone action with the UKIPO and also by way of trade mark infringement proceedings as a counterclaim.
In essence, the situation is similar to that of trade mark opposition proceedings. Section 46 of the Act provides that a trade mark may be revoked if within the period of five years following the date of registration the mark has not been put to genuine use in the UK in relation to the goods or services for which it is registered.
If an allegation of non use if made, the burden will then fall on the trade mark proprietor to show that the mark has been used.
Again, put simply this means that if an allegation for trade mark infringement is made it would be prudent for the alleged infringer to review and determine if the trade mark has been put to use. If the trade mark has not been put to use for a continuous period of five years there may be a viable defence to the allegations of trade mark infringement.
To conclude, if you are the proprietor of a trade mark you should be ensuring that the mark is put to genuine use within the relevant territory. If the mark has not been put to genuine use, you may have a nasty surprise when you put your registered rights to the test.
If you need assistance with ‘proof of use’ or wish to make use of it as a defence, why not give Lawdit a call where the team would be delighted to assist you.
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