{"id":3736,"date":"2020-07-06T10:58:59","date_gmt":"2020-07-06T08:58:59","guid":{"rendered":"https:\/\/barzano-zanardo.snaptest.it\/?post_type=approfondimenti&p=3736"},"modified":"2020-07-06T10:58:59","modified_gmt":"2020-07-06T08:58:59","slug":"revocation-for-non-use-of-eu-trademarks","status":"publish","type":"approfondimenti","link":"https:\/\/barzano-zanardo.com\/en\/approfondimenti\/revocation-for-non-use-of-eu-trademarks\/","title":{"rendered":"Revocation for non-use of EU trademarks"},"content":{"rendered":"

The regulation establishes the penalty of revocation<\/em><\/strong> for an EU trademark<\/a> which is not effectively used within five years from its registration or whose use is suspended continuously for five years, except for those cases in which the lack of use is justified by a legitimate reason (Articles 18 and 58 of the EU Trademark Regulation, UE 2017\/1001, hereafter \u201cEUTMR\u201d).<\/p>\n

In order to preserve the exclusive right on a trademark<\/a>, it is necessary to use it effectively.<\/p>\n

The lack of use for a period of five years does not imply as such the revocation of the registration. This should be requested by a third party<\/strong> with an action before the EU Intellectual Property Office (hereafter \u201cEUIPO\u201d) or with a counter-claim in a counterfeiting action before the competent EU Court.<\/p>\n

In these actions, the burden of proof regarding the use<\/strong> of the trademark<\/a> lies with the registration\u2019s owner<\/strong>.<\/p>\n

Considering the level of proof required and the strictness of the EUIPO, the assessment of the revocation is certainly, on one hand, an effective and cheap way to obtain the cancelation of third parties\u2019 trademarks<\/a>. But on the other hand, it could cause serious difficulties to the registration\u2019s owner who \u2013 even though actually using the trademark \u2013 cannot demonstrate it.<\/p>\n

Why is the proof of use so burdensome? To answer this question, it is important to specify what is meant by genuine<\/em> use of a trademark<\/a> and how to prove it.<\/p>\n

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What is meant by genuine use of a trademark?<\/u><\/strong><\/p>\n

The case law clarified that the genuine <\/em>use consists in the real exploitation<\/strong> of the trademark by its owner or with his\/her consent, in order to keep or find the market shares for the related products or services, excluding the possibility of a mere symbolic, sporadic or episodic use.<\/p>\n

In order for the use to be genuine,<\/em> the trademark should be used as a distinctive sign<\/strong> in the reference market<\/strong> (not only within the company) for products or services already on sale<\/strong> or whose commercialization \u2013 prepared for example with advertisement campaigns<\/strong> \u2013 is forthcoming.<\/p>\n

In absence of any parameter about a minimum sufficient use established by the case law, what really counts is to be able to provide evidence that the trademark owner actually tried to gain or keep a position in the market, rather than having used the trademark only with the aim to keep the right related to it.<\/p>\n

\u00a0<\/strong><\/p>\n

How can you prove the genuine use?<\/u><\/strong><\/p>\n

In order for the evidence to be relevant, they should be dated and make reference to a place – besides, of course, to the trademark \u2013 and such requirements are checked with particular accuracy<\/strong> by the EUIPO.<\/p>\n

The sales invoices<\/strong> clearly reporting an economic transaction, together with products\u2019 catalogues, materials and other data regarding the promotional investments are the main pieces of evidence<\/strong> to demonstrate the effective commercialization of products\/services.<\/p>\n

In case the invoices do not mention the trademark but the articles\u2019 codes only, it is necessary to cross-check these details with the dated catalogues. Sometimes this requirement results very troublesome for some companies that, even though using the trademark, cannot actually prove it.<\/p>\n

Besides the most common evidence of use, it is relevant to show also documents proving the online<\/em> presence of the trademarks. How are they significant in the probative process?<\/p>\n

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