As trade marks can be renewed every ten years indefinitely, there is the potential for a trade mark proprietor to exercise the perpetual exclusivity of a trade mark and enforce their rights against potentially conflicting trade marks. However, the validity of a trade mark relies on a crucial core element – genuine use. Here, we will address what constitutes genuine use, the impact of timeframes on genuine use, and the consequences of Brexit on proving genuine use.

Genuine use

Subject to there being no proper reasons for non-use, registered UK and EU trade marks are vulnerable to cancellation (revocation) if the mark has not been used as registered in the relevant territory.  Revocation can occur if the trade mark has not been put to genuine use within any period of five consecutive years following the date of completion of registration. If a revocation action is successful, the rights of the proprietor cease to exist from the date of the application for revocation or from an earlier date where it is found that the grounds for revocation existed.

Genuine use should be genuine commercial use by or with the consent of the trade mark proprietor. Use should not be token, that is, merely to preserve the rights conferred by registration. As such, use should be by way of a real commercial exploitation of the mark on the market for the relevant goods/services that is warranted to preserving or creating a market share.

There are no defined parameters per se, for genuine use to be proven and there is no minimum quantity of goods needing to be sold or of services needing to be supplied in order to satisfy the genuine use threshold.

The below points are examples of use that constitute genuine use of a trade mark:

• Date of first use of the mark (date of first product produced under the mark)
• Invoices in relation to the goods/services of the registration and bearing the mark as registered.
• Annual profit or turnover figures of goods/services produced or marketed under the mark
• Dated photographs or images of the product bearing the mark.

The assessment of genuine use is based on the facts of each case. In particular, the characteristics of the market concerned, the nature of the goods/services registered under the mark, how geographically widespread and frequent the use is, are all accounted for.

Any genuine use must be consistent with the essential function of a trade mark, as a badge of origin, guaranteeing the economic origin of the goods/services to the relevant consumers.

Revocation of a registration may be total or partial depending on whether or not the mark has been used as registered for all or only some of the goods/services of the registration.

Genuine use for the purposes of an opposition

Genuine use of an earlier mark is also required to support the validity of a registration for the purposes of opposing an application or invalidating a later registration.  Evidence of genuine use of the earlier mark may only be requested if the registration date of the earlier mark falls outside of the five year period ending on the application date or priority date (whichever is earlier) of the application or later registration.   If the registration date of the earlier mark falls within this five year period, the earlier registration will be considered to be valid, irrespective of the use of the mark.

The impact of Brexit on genuine use and the comparable UK trade mark

The UK’s departure from the EU on the 31^st December 2020 means that registered protection for EUTMs no longer extends to the UK.

The result was that for all EUTMs registered before 31 December 2020, a comparable UK clone trade mark was created, coming into effect from 1 January 2021.

So what does this mean for genuine use and what are the key dates?

For many trade mark owners, these comparable UK trade marks had not been used in the UK.

As such, where any five-year period to demonstrate genuine use includes time before 1 January 2021, prior to Brexit, genuine use in the EU will be considered as valid genuine use for the comparable UK trade mark (but only until 31 December 2020).

In any event, keeping a record of use could prove crucial in proving genuine use of a mark, either to defend the validity of the registration against a revocation action or to maintain the validity of a registration for the purpose of relying on the registered rights following the initial five year period after grant of registration.

For further information about genuine use and maintaining your registered rights, please get in touch to speak to one of our trade mark attorneys.