Proof of the genuine use of the EU trade mark in the opposition in the EU
For the protection of the trade mark for the goods/services, the first owner should provide evidence of the genuine actual use of the trademark on the request of the applicant who wants to register the similar/identical trade mark. The important reason to request the proof of the genuine use of the EU trade mark is the possibility of creating an identical or similar trade mark if the first trade mark is older than 5 years old and it is not used by its owner.
According to the national laws and their strict compliance with the EU legislation regarding the issue of non-registering of a similar trade mark, the first person who registered the trade mark can oppose to the registration of the trademark by another person, who is willing to register a similar or identical trade mark that can create a likelihood of confusion within average consumers. The only reason that allows creating a similar trade mark is that the first person who registered it earlier (first owner) does not use it for 5 years after the date of registration. The new EU trade mark reform in legislation consists of several amendments in the opposition to register the similar/identical trade mark in case of proving the genuine use of a trade mark.
What is the genuine use of a trade mark?
The first owner should prove the actual genuine use of a trade mark within the territory where this trade mark is used, in our case it is the EU. An EU trade mark shall have a unitary character and it shall have equal effect throughout the European Union. In addition, it means that the evidence shall show some important details that are related to the usage of a trade mark by the first owner. For instance, the details about the place and time of use of a trademark, in addition, the evidence should consist of the information about the nature of the use within the disputed classes of goods and services.
The one of the recent case in the United Kingdom, Kettel Produce Ltd (the Applicant) vs. Huntapac Produce Ltd. (the Opponent) shows that:
a) An evidence for the proving of the genuine use by the first owner should be detailed, dated and precise. Therefore, the first owner should show the genuine use of a trade mark on the goods that are protected by it, provide evidence of use in the market and scale.
b) The first owner should show the use of a trade mark on the goods that are similar physically and have reference to the same class. And, in general, the goods with the trade mark should be put on the market and made accessible to consumers.
When does the new EUTM Regulation for the proving of the genuine use of the trade mark comes into force?
The regulation on the European Union trade mark that was adopted on the 14th June of 2017 should be regarded as entered into force from the 1st October of 2017.
Who can ask for the proof of the genuine use of the EU trade mark?
The applicant who wants to create a similar or identical trade mark.
When can the applicant ask for the proof of the genuine use?
When the existence of your mark is equal or more than 5 years from the registration of it.
If I use an EU trade mark not in the form that was registered, will it be the genuine use of the trade mark?
It’s ok when the use of the EU trade mark is in the form that differs in the elements, but it should not alter the distinctive character of the trade mark in the form in which it was registered.
If I use the EU trade mark only to the part of the goods/services, what should be protected under the genuine use of the EU trade mark?
In that case, only the part of the goods/services for which the trade mark is registered can have the protection. One should also pay attention that in the opposition proceedings only that part of goods/services shall be deemed to registered.
For what period should I prove the genuine use of the trade mark?
The first owner should prove the genuine actual use of the EU trade mark during the five-year period preceding the date of filing or the date of priority of the EU trade mark application made by the person who wants to register the similar/identical trade mark.
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