Trade Marks – The Importance of Use

20 Jun 2022
When a trade mark is registered, it’s tempting to think that the job is done. Tempting but wrong! Maintaining use is a key requirement for any trade mark. Proving use is no less important.

In the process of filing a trade mark in the UK, the applicant has to declare that there is bona fide intention to use the mark for the goods and services applied for. That same principle underpins the right to challenge or cancel a trade mark if it is not used for a period of five years or more.

Typically, challenges arise in the context of opposition proceedings, where a party enforcing its trade mark rights may face the threat of cancellation and allegations of non-use in respect of its trade mark. If that challenge arises, the burden of proof falls on the trade mark owner to provide compelling evidence of use. This is a useful tactic because it is remarkable how difficult it can be, even for well-run companies, to provide good compelling evidence of trade mark use.

The most glaring recent example of this is probably the 2019 decision of the EUIPO Cancellation Division, in which McDonald’s Big Mac trade mark was cancelled for non-use, despite the fact that McDonald’s sells over 91 million Big Macs annually in the UK alone. The failure resulted from deficiencies in the evidence submitted on behalf of McDonalds but the decision demonstrates that if McDonald’s can be caught out, then anyone else can be caught out in the same way.

Having a process or regime to record trade mark use is a relatively easy but important step in protecting and maintaining trade mark registrations. Allocating someone within your organisation, perhaps in the marketing department, with responsibility for maintaining a record of usage can be invaluable. It could be done quarterly or even annually but it should include good examples of trade mark use, such as sample sale invoices, webpages, marketing materials, evidence of attendance at events or exhibitions, customer reviews or surveys, testimonials, online traffic data and anything else that supports genuine use of your trade mark in relation to each of the goods and services in your registration. Ideally the evidence should be date stamped and independent. Separate records should be kept for each trade mark territory.

Carrying out that straightforward housekeeping task on a regular basis is part of good trade mark management and will save you time, effort and potential disappointment if your mark is ever subject to challenge.

Those records will also be extremely useful for the maintenance of trade marks in foreign territories, such as the USA, which require declarations of use, accompanied by evidence, to be filed at intervals during the life of a trade mark registration.

If you need any further guidance on this matter, get in touch.