Trademark families, use your trademarks or you could lose them

A recent case in France has demonstrated that a similar trademark cannot be used to prove the use of another.

According to Dreyfus,  Otech, an irrigation system manufacturer based in the Pyrénées-Atlantiques region of  France recently accused two other companies of infringing on two of their French trademarks. Irtec and Ocmis had been accused of using the marks BIG RAIN and MICRO RAIN for which Otech is the trademark owner.

However, the accused companies claimed that Otech was not using the trademarks in question and that according to French Intellectual Property law if a trademark owner makes no use of their trademark for a continuous five-year period then their rights to the mark can be revoked.

In January 2014, the Court of Appeals in Pau ruled in favour of Irtec and Ocmis and declared that both trademarks should be revoked from Octec.

Following this ruling, Octec decided to appeal to the French Supreme Court claiming that they were using the trademarks, as according to French Intellectual Property law as long as the mark remains distinct it can be used in different areas. The irrigation system manufacturer owns sixteen trademarks for their products and all of these make use of the word ‘rain’. Octec claimed that their mark ‘Mini rain’, (which is in use), does not differ from the mark in question, Micro rain, and therefore the latter is in use.

As the marks are not identical, the Supreme Court  ruled to revoke the trademark ‘Micro Rain’ in January.

This case has shown that a company cannot prove the use of one trademark by demonstrating the use of another that is only similar and not identical to it. A trademark’s protection can be lost if it is not used for a consecutive fixed period of time, (in the EU it is a 5 year period).

Furthermore, when opposing a trademark application that may infringe upon your own, if you cannot prove that you have used your EU trademark in conseccutively over the last five years then your claim will be unsuccessful.

Therefore, companies that have a large portfolio of trademarks should be careful to ensure that they make enough use of them in order to keep their trademark rights and protect their brands in the future.

For advice and more information on searching, acquiring, registering and enforcing Trademarks please visit our website, Our unique database of trademarks for sale or license could save you time and help protect your brand.