Advice on the use of a trademark

What does the use of a trademark mean? Does a trademark even have to be used?

The use of a trademark is a central aspect of trademark protection. The purpose of a trade mark is to distinguish the goods and services of one company from those of another. You can register your trademark here.

However, the trademark laws of the various countries vary in terms of how the trademark is used. What all legal regulations have in common is that the trademark owner must be able to prove the use of the trademark at some point in time.

In the case of trademarks, such as those that are possible in the USA, for example, proof of use of the trademark for the goods and services must be provided regularly at the time of registration. Because in the case of a user trademark, protection begins with the day of first use.

In the European Community, trademark protection can also be acquired through use. The trademark protection, on the other hand, is independent of its use. It is acquired by simply registering the sign in a trade mark register (register mark). Thus, trademark protection can only be used to prevent the registration of similar trademarks in the register.

However, the purpose of a trade mark is to distinguish the goods and services of one company from those of another. Therefore, the serious use of the trademark in the protected area is also required for registered trademarks. If the proprietor of a registered trade mark has not seriously used the trade mark for the goods or services for which the registered trade mark has been registered within 5 years from the date of registration, the trade mark may be deleted from the protected area due to the lack of use. The same applies if the use of the mark has been suspended for an uninterrupted period of 5 years if there are no legitimate reasons (for example, war) for non-use.

What is “proof of use”?

Proof of use is evidence that clearly shows how you are using your mark in commerce on the identified goods or in connection with the services in your registration.

Examples for goods:

Photographs that show the mark on a tag or label affixed to the goods
Hang tags or labels with the mark and the generic name of the actual goods on the tag or label and informational matter that typically appears on a tag or label in use in commerce for these types of goods
Screen shots of web pages with the URL and access or print date that show the mark being used in connection with the goods at their point of sale
Photographs of the mark on packaging where the goods are visible through the packaging
Photographs of the mark on packaging where the packaging identifies the generic name of the goods included in the package.

Examples for services:

Copies of brochures or flyers where the mark is used in advertising the services
Photographs of the mark on retail store or restaurant signage
Photographs of the mark on service vehicles
Screen shots of web pages with the URL and access or print date where the mark is used in the actual sale or advertising of the services.

What is considered to be the use of a trademark is controversial. In the EU, for example, the use of a sign in a form that differs from the registration only in parts, without affecting the distinctive character of the mark, is already sufficient. In other countries, however, the use of the trademark must take place regularly in the form in which it is registered.

Use is generally defined as the affixing of the trade mark to goods or their presentation in the protected area, even if these goods are intended exclusively for export. The act of use shall also include affixing the sign on goods or their presentation or offering goods under the sign or placing them on the market or owning them for the stated purposes. The same shall apply if services are offered or provided under the sign, if goods are imported or exported under the trademark and the sign is used in business papers or in advertising for the stated purposes.

The use of a trademark plays a central role in opposition proceedings and infringement proceedings if the trademark registration took place more than 5 years ago. This is because, at the request of the applicant for a later trade mark, the proprietor of the earlier trade mark from which opposition or action has been filed must, at the request of the applicant for a later trade mark, furnish proof that, within the last five years prior to the publication of the application for the trade mark, he has seriously used the earlier trade mark in the protected area for the registered goods and services, in particular for those which he invokes to justify his opposition or action.

If such evidence cannot be provided, the opposition or action shall be rejected. Where the earlier trade mark has been used for only part of the goods and services for which it is registered, for the purpose of examining an opposition, that trade mark shall be deemed to have been registered only for the goods or services used.

In addition, a trade mark which has been registered for the goods or services for which it has been registered and which has not been used seriously for an uninterrupted period of five years in the protected area may be declared invalid on application.

The use of a trade mark is generally evidenced by the submission of documents which show that the trade mark has been used for each product and service identified in the trade mark registration. As proof of use, catalogue excerpts, advertising letters, business letters, Internet pages and other commercial documents from which the use of the trademark can be readily deduced in relation to the specific goods or concrete service.

It is therefore advisable, after registration of a trademark, to create a list in which the trademark use for the respective goods and services is documented and to secure the respective advertising of the individual basket of goods or services. If you make sure that you advertise each individual product in such a way that your trademark is clearly visible on the product, you can ensure with little effort that, should it be necessary, you can also securely prove proof of use.