The protection granted by the Community Trademark right has its reason to exist if the trademark fulfills its essential function: identify and distinguish the goods and services offered in the market. Otherwise, an improper monopoly could be established on a registered trademark.
This obligation is intended to facilitate the functioning of the system avoiding the presentation of oppositions and nullity actions based on previous registered trademarks that have not been used in the EU market.
This allows to limits conflicts between two trademarks, where there is no economic justified reason resulting from an actual function of the trademark in the market.
The monitoring of the compliance of the duty to use is entrusted to the parties in a process of opposition, invalidation and expiration, and in any case by the initiative of the OHIM.
The appreciation of the use must be analysed according to the following criteria:
Use of a community trademark. Nature:
The protected sign shall be used as a trademark, in other words to differentiate the goods and services of a company against its competitors in the market. This can be demonstrated by providing invoices, catalogues, packaging, etc.
The use of the trademark should be done in economic transactions, meaning that goods and services are offered on the market. On the contrary, product storage will be not considered as use, for not being external and public.
obligation to use a registered community trademark. place:
Trademarks must be used in the territory in which they have been registered. If the previous right belongs to a national trademark, we would have to demonstrate the use in such country. If the right is a community trademark, the demonstration of the use in the territory of a State would be sufficient.
obligation to use a registered community trademark. terms:
According to the Community Trademark Regulation , the obligation to prove its use is required only to whom initiates an opposition (the opponent) or nullity (the applicant) if the previous trademark has been registered for a minimum period of five years before the date of publication of the community trademark application.
use of a community trademark. Magnitude of the use:
This use should not be symbolic but real and effective, which means that the use of the distinctive sign in question shall be in accordance with its essential function: identify, differentiate and sell the goods or services on the market.
If the trademark is not actually used for some of the goods or services for which it have been registered, the Opposition shall remain supported for the goods and services used and the procedure will be based on such goods and services.
OHIM is sovereign in the assessment of the use of a trademark and shall be conducted case-by-case, following this sample guidelines we have presented above.
In conclusion, it is worth analysing the use of your trademark after 5 years from its registration in order to make sure it fits with the goods and services for which it was registered and how it is being used.
