“The Requirement for genuine use of the trademark” – Guide

Let us begin by stating that in Italy and the European Union, there is a grace period granted to the trademark holder, allowing them five years from the date of the first registration to start using the trademark. This is a period of time that the legislator grants to the holder/entrepreneur to carry out all the preparatory actions necessary to start the activity and use their trademark on the market.

This need must always be balanced with the requirement for genuine use, which national and European regulations impose on holders of registered trademarks to protect them from the possible revocation at the request of third parties.

Even the giant McDonald’s was called to defend itself, losing rights to some of the products and services it had claimed, precisely because it was unable to prove that the BIG MAC trademark was actually used in relation to “chicken-filled sandwiches,” “poultry-based foods,” and services “provided or related to the operation of restaurants and other food service premises for consumption and drive-in; preparation of take-out meals,” which were included among the claimed products of the registration.

The evidence of use provided consisted, in fact, only of advertisements for “chicken-filled sandwiches,” limited to a few flyers and billboards and a number of screenshots from McDonald’s social media pages, which, at most, were suitable to prove the promotion of the trademark but not the actual public sale of chicken sandwiches under the “Big Mac” brand.

Thus, the commercial volume of use or its frequency was not proven in the relevant period.

Similarly, McDonald’s did not prove in any way that the Big Mac trademark had been used as a service mark and it was, therefore, revoked.

This case, which involves the American fast-food giant, allows us to reflect on the key requirements for proving genuine use.

It is well-established that when registering a trademark for the first time, one tends to include a broad category of goods/services in the claims, often broader than what is essential. We cannot deny that this strategy, economically speaking, is generally correct, especially during the promotional launch phase when the trademark is not yet commercially in use.

On what grounds did the Court declare the trademark’s cancellation due to non-use?

At the regulatory level, it should be noted that in the context of a revocation procedure, the holder of an EU trademark is declared to have lost their rights, at the request of a third party, if the trademark has not been subject to genuine use in the Union for the products or services for which it was registered for a continuous period of five years, and there are no legitimate reasons for non-use.

Case law provides a well-established definition of genuine use: a trademark is subject to “genuine use” when it fulfils its essential function as an “indicator of origin,” that is, it guarantees the entrepreneurial source of the products or services for which it was registered.

It logically follows that so-called “symbolic uses,” which are merely intended to maintain the rights conferred by the trademark, are not considered genuine uses.

How can one verify if there is adequate evidence of genuine use of a trademark?

Types of documents:

The following types of documents are considered suitable evidence of use: boxes, packaging, containers, and labels of products, product sheets, product descriptions, manuals, instruction booklets, commercial documents related to the sale of products, including invoices, bills, receipts, coupons, certificates of product import/export, customs declarations, advertisements via mail or other channels such as radio, television, and other media, billboards, exhibitions and displays held with the approval of the relevant administrative departments of governments at various levels, including printed articles and other materials, photos, etc.

It is also interesting to note the evidence provided through affidavits of use, which many businesses, especially common law businesses, mainly British and American, tend to use to prove the use of their trademarks.

However, it should be specified that it is not advisable to submit affidavits alone; it is important that these affidavits are supported by documentation proving the genuine use of the trademark (to be attached to the submitted affidavit) and that they are legalized in the country of reference to be considered valid. Otherwise, a mere statement containing a list of economic data would be deemed inadequate.

In fact, in the case of the fast-food chain, the data presented by McDonald’s were considered “just raw data, not broken down by products, relating to sales of ‘Big Mac’ in France between 2013 and 2017.”

The documentation must also contain specific information:

a) Place: It is essential that the evidence relates to the relevant territory. In this case, the holder of the European Union trademark must prove use in at least one or more EU member states and, in any case, submit material suitable to demonstrate use in the market of EU countries. Some evidence was deemed insufficient as it related only to France and to just one year.

b) Time period: In an action for cancellation due to non-use, the holder must demonstrate genuine use of the contested trademark during the five-year period preceding the revocation request. It is therefore essential that the submitted evidence is dated. A document without an actual date (or verifiable with references/attachments) will not be considered valid evidence!

c) Extent: The evidence required for genuine use can be quite complex (or tricky!). While there are no set quantitative thresholds for sufficient use, this assessment always depends on the relevant market and the specificity of the products and/or services for which use must be proven. One example will better illustrate what is meant:

The level of evidence required for mass-market clothing products must necessarily be consistent with market share and expected revenue. Therefore, it is unlikely that submitting a small number of sales invoices for one or two items, limited to a single year of the reference period, will save the trademark from revocation.

On the other hand, so-called “luxury” goods, such as yachts and precious jewelry, whose selling price can reach very high amounts, will certainly require less volume of evidence, since these goods – due to their nature and price – generate sales that are different and less frequent compared to mass-market clothing.

In the case of Big Mac, the Office deemed the documentation submitted insufficient because fast food is sold with high frequency and generates sales volumes that are relevant for their quantity. These are low-cost goods chosen because they can be consumed quickly and economically.

d) Nature of use: The evidence must refer to the use as a trademark, i.e., use that conforms to its essential function in normal commercial practice (internal uses such as inter partes documents or communications directed to employees, etc., are generally not considered); moreover, it must refer to the trademark in the form in which it is registered and in relation to the products and services for which it is registered;

e) Commercial volume of all acts of use: Depending on the type of product or service, it is necessary to gather as much documentation as possible to prove sales, their volume, and economic-financial relations;

f) Duration of the period during which acts of use have occurred and the frequency of those acts.

These requirements for proving use are cumulative, so it is necessary to consider them all when gathering documentation.

Additionally, when selecting and evaluating evidence, it is important to consider the interdependence between the factors involved. Therefore, a low volume of products or services marketed with the trademark can be offset by high intensity or great consistency of use over time, and vice versa.

In other words, the evidence of use is sufficient if it shows that the trademark holder has made a serious effort to acquire or maintain a commercial position in the relevant market.

Finally, illegal uses that are capable of proving use are also relevant, such as uses authorized by the holder or made on their behalf (e.g., by licensees).

Similarly, a trademark can be saved from revocation if there is evidence of legitimate reasons for non-use. A typical example is the so-called force majeure, such as natural disasters. In contrast, the majority of case law tends to exclude business failure as a legitimate reason.

Lastly, the notoriety or fame of a trademark does not lower the threshold of proof of use required; therefore, this case shows that even very well-known or iconic trademarks like “Big Mac” can become vulnerable and be revoked if attention is not paid to gathering and maintaining evidence of use.

The case has demonstrated how the issue of genuine use is truly crucial for keeping the exclusive rights on a registered trademark alive, even when dealing with very well-known and/or renowned trademarks.

The suggestion, therefore, is to collect evidence from the first offering of products/services on the market so that, if the use of the registered trademark is questioned (in a revocation action, but also in case of opposition), the holder will find it easier to gather the evidence.

If you believe that your trademark may be invalidated due to non-use, our trademark attorneys are available to assist you in reviewing and developing a protection strategy to prevent any revocation.