If someone has started a cancellation procedure against your trademark purporting that your trademark is not being used ‘genuinely’, it’s a shock of course, and you are probably also asking yourself what this is all about. Don’t worry, we explain it all for you in this article, and what you can do if it happens to you.
What is a cancellation procedure?
A "cancellation request” is a legal procedure. Someone files a request with BOIP for a trademark registration to be cancelled. There can be different reasons behind this. For example, it might be suggested that the trademark is not being ‘genuinely’ used for certain products or services, and that therefore no valid monopoly can actually apply.
What does ‘genuine use’ mean?
A registered trademark gives you the exclusive right to use it; it gives you a monopoly. However, you also have an obligation to use it. After registration, you must use your trademark within 5 years for all the products and services it is registered for.
When ‘genuine use’ is questioned, it is considered whether the trademark is really and credibly being used on the market. You have to be able to prove that it is.
Below we give you 4 tips on how you can defend or prove genuine use of your trademark.
How do you prove genuine use of your trademark?
Tip 1: Make sure your trademark has been registered properly
Proper trademark registration is the basis for defending yourself successfully. Register the trademark only for products and services that you really use it for. Take a critical look at your trademark registration within 5 years: is it still needed for all the products and services it was registered for? If not, let BOIP know which products and services you would like to have removed. It will save you from having to deal with a cancellation procedure in the future.
Tip 2: Make sure that supporting documents meet the requirements
This does not mean you have to collect and ‘dump’ piles of paper during such a procedure. Make sure that the supporting documents you submit meet the practical requirements: add a table of contents with the numbering and a description of each document. Mark relevant passages and limit the quantity of proof (more about this later).
Tip 3: Demonstrate actual use and provide relevant supporting documents
The supporting documents must show that you have actually made efforts to bring a product or service on to the market. Just quickly setting up a website for the brand and printing business cards is not enough. In such a case, the use is then simply a subterfuge.
Proof of genuine use must show the location, the duration and the manner of use of your trademark. Consider invoices, screenshots of webshops, photos of products, etc.
Quality is more important than quantity here. There is no point in submitting 500 pages of screenshots of websites. Select representative proof covering a 5 year period whereby the product and the trademark are clearly visible. Invoices are also important as they show that a product or a service has also actually been delivered. Keep the quantity of supporting documents limited to a maximum of 110 pages.
Tip 4: Consider the supporting documents as a whole
Documents can complement and clarify each other. A combination of proof can provide a clear picture of genuine use of a trademark. For example, a combination of sales figures can be supported by an annual report, invoices, order confirmations and print-outs or screenshots of the products. If some of the documents then have no date, or even if the trademark itself is not shown, it does not have to be a problem for the entire set.
A cancellation procedure is a legal procedure. You would be well advised to seek assistance from a legal professional. They can advise you as to the options open to you and assist you in your defence.
We have also published a more extensive article on this topic for legal professionals. Read also USUS MAGISTER EST OPTIMUS: 5 tips for a successful ‘non usus’ defence claim