This article will give you some insight into how BOIP assesses genuine use of a trademark. In BOIP’s proceedings, the question whether or not a trademark is genuinely used plays an important role. It can be relied upon as a defence in opposition or cancellation proceedings based on an earlier mark. It can also be referred to as a ground for revocation in cancellation proceedings. BOIP’s legal staff therefore have to deal with this topic almost every day. Here we give you 5 tips for more chance of success when defending against or making ‘non usus’ claims, based on our experience.
Author: Eline Schiebroek
Tip 1: Start by registering your trademark properly
The route to successfully challenging a ‘non usus’ claim starts with registration. It is of crucial importance that the trademark is registered for the goods and services it is actually being used for.
Things can sometimes go awry here, in particular with services. We regularly see registrations for services such as ‘advertising’, ‘telecommunications’ and ‘publishing’, where the trademark owner is an insurer or a retailer for instance. The trademark owner does not, however, provide these services to third parties; rather, these are services performed for his own account. In such a case, there is no use of a mark, given that the trademark must be used ‘publicly and outwardly’ to ensure an outlet for the goods or services it represents.1
Such a registration usually also includes the trademark owner’s ‘core service’, but sometimes even that is not the case. In situations like this, it can be difficult to enforce the trademark after five years.
Tip 2: Make sure that your supporting documents meet the practical requirements
Gone are the days for piles of paper to be ‘dumped’ were we had to look for any sign of the trademark concerned. Since 1 January 2021 BOIP has a number of practical requirements for the submission of supporting documents and means of evidence:2
- Supporting documents must contain a table of contents including the numbering of the documents, a short description of each document and a description of the facts the document provides proof of. If applicable, the information provided has to refer to the relevant pages.
- To help with reading, relevant passages must be highlighted if the document also contains information that is not relevant.
- Limiting the quantity of supporting documents is recommended. More about that later.
Furthermore, it is useful to know that since 13 September 2022 there are also specific requirements for how to request for proof of use.3
Tip 3: It is not a matter of commercial success; it is a matter of real commercial use
So what actually is genuine use of a trademark? The answer is quite logical. A trademark is being put to genuine use when it is used as it is intended, i.e. to guarantee the identity of the origin of the goods or services for which it has been registered, in order to create or preserve an outlet. 4
So-called ‘token use’ is not sufficient. ‘Token use’ does not suffice because the trademark is not being used for the purpose it was intended. In such a case, the use is simply a farce and only serves to maintain the trademark on the register.5
When considering the question of whether a trademark is genuinely being used, a check is made to see whether the commercial use is real.6 The following points are taken into account:
- practices regarded as warranted in the market;
- nature of the goods and services;
- market characteristics;
- scale and frequency of use.
Rather than looking at these points individually, we assess them as a whole. The question of whether particular numbers of sales are sufficient depends, for example, on the market characteristics and the nature of the goods. For expensive items such as solar panels, cars or financial services, the threshold will be lower than for clothing for instance, because clothing is a consumer good that is purchased on a regular basis.
For European Union trademarks, the territory for which use has to be demonstrated is larger than that required for a national or a Benelux trademark. After all, it must be demonstrated that the trademark is used for the purpose of creating or maintaining shares in the market of the European Union. The threshold for this is therefore generally higher.7
It is important to note that this is not an assessment of the commercial success of a mark. What has to be demonstrated is that the product or the service is marketed in a serious and commercially credible way.
Tip 4: Provide relevant proof
The proof of use must include references to the place, duration, extent and manner of use of the trademark for the goods and services concerned.8
Examples are, for instance, invoices, offers, screenshots of webshops, photos of products, labels and , shops, catalogues, advertising material, brochures, annual reports, press releases, posts on social media, et cetera.
Offering a variety of documents is an important key to success. Be careful though: the first rule when gathering proof of use is ‘quality before quantity’. There is no point in submitting 500 pages of screenshots of websites. A selected number, spread to cover 5 years, with the product and the trademark clearly visible, will say more than hundreds of pages which also contain brands/products/advertisements that have nothing to do with the matter. The same is true for catalogues and press releases.
We therefore strongly recommend limiting your supporting documents to a maximum of 110 pages.
Tip 5: Do not dispute each individual piece of evidence
When contesting means of evidence, sometimes much attention is given to analysing each individual document separately and stating, for instance, that the document i) has no date, ii) does not include the trademark, iii) does not include the goods/service, iv) does not show which territory is concerned, v) does not show for which public it is intended, et cetera.
Not every individual piece of proof must contain all the aforementioned details though. Documents can complement and clarify each other.9 A combination of sales figures, supported by an annual report, a selected number of invoices or order confirmations and print-outs/screenshots of the products can, for example, give a clear picture of the scope of the trademark’s use.
However, genuine use of a trademark cannot be based on probabilities or presumptions.10 It is therefore advisable to highlight any gaps in the means of evidence ‘as a whole’, rather than to discuss each document separately.
In this article we have provided some practical information about composing means of evidence in opposition and cancellation proceedings, based on the way we operate. It is true that gathering proof of use is and often remains a difficult task; we understand that only too well.
1 General Court of the EU, 12 March 2003, T-174/01, ECLI:EU:T:2003:68, paragraph 39 (Silk Cocoon) and see by analogy CJEU, 15 January 2009, C-495/07, ECLI:EU:C:2009:10 (Silberquelle).
2 Submission of supporting documents and means of evidence | Benelux Office for Intellectual Property (boip.int)
3 New procedural rule for requesting proof of use | Benelux Office for Intellectual Property (boip.int)
4 CJEU, 3 July 2019, C-668/17, ECLI:EU:C:2019:557, paragraph 38 (Viridis), and CJEU, 11 March 2003, C-40/01, ECLI:EU:C:2003:145, paragraph 43 (Ansul).
5 As an illustration, see the BAIDU cases in which it was debated whether or not there was ‘token use’ (Cancellation decisions 3000312, 3000313, 3000315 and 3000316 of 29 December 2022).
6 CJEU, 31 January 2019, C‑194/17, ECLI:EU:C:2019:80, paragraph 83 (Pandalis), and CJEU, 11 March 2003, C-40/01, ECLI:EU:C:2003:145, paragraph 43 (Ansul).
7CJEU, 19 December 2012, C-149/11, ECLI:EU:C:2012:816, paragraphs 54-58 (ONEL) and CJEU, 11 March 2003, C-40/01, ECLI:EU:C:2003:145, paragraph 39 (Ansul).
8 In accordance with Rule 1.25, paragraph 2 of the Implementing Regulations.
9CJEU, 17 July 2008, C-488/06, ECLI: EU:C:2008:420, paragraph 72 (Aire Limpio) and General Court of the EU, 8 July 2004, T-203/02, ECLI:EU:T:2004:225, paragraph 53 (Vitafruit).
10General Court of the EU, 8 July 2020, T-686/19, ECLI:EU:T:2020:320, paragraph 35 (GNC LIVE WELL).