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Usage of the Community Trademark: How, When and Where

The article 15 of Council Regulation (EC) No. 207/2009 of February 26th, 2009 on the Community Trademark states that trademarks shall be put to genuine use in connection with the goods or services for which they have been registered, within the European Union.
Unless there are proper reasons for non-use, failure to do so may allow a third party to bring successful invalidation proceedings before the WIPO.

Or if the trademark is being used as evidence in an opposition or nullity claim against a third party, this may be unsuccessful because the right has been invoked because of not used.

However, not all uses of a trademark are considered “genuine”. Uses must also comply with a set of conditions concerning when, where and how they are used.

WHEN

The obligation to provide evidence of use does not arise with respect to the date of application or registration of the trademark, but to the fact that such use has been suspended during an interrupted period of five years.

WHERE

Both the Joint Statements by the Council and the Commission of 20 October 1995 and the WIPO Guidelines state that use which is genuine in one country constitutes genuine use within European Union.

This principle was ratified by the European Court of Justice (ECJ) in the case of Pago versus Tirolmich on 6 October 2009, when the court held that usage which is genuine in one country may be interpreted as genuine use in the European Union.

To consider the use of the trademark in a Member State to be sufficient, another criteria is the population of that specific territory, land extension and those criteria we mention when we talk about the components for a genuine use.

HOW

Especially important is the recent decision of the ECJ dated 19 December 2012, which sets out the conditions for the usage to be considered “genuine”.

Therefore, not only geographical area but also the nature of the products and services must be taken into consideration, as well as the level of use and type of market in which the products are marketed.

For example, to demonstrate genuine use of a trademark in the jewellery sector it would not be reasonable to demand that a significant number of units be sold, as may be required for mass consumer goods.

Carmen Sánchez-Puelles