If I don’t use my trademark can I lose its protection?

In order to reduce the likelihood of the trademark register being overrun with marks that are no longer active,  if a company does not use their EU trademark  for five consecutive years, the trademark authorities have the right to revoke their decision and take the name off the register.

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

According to the All About IP blog Barcelona Football Club recently lost a trademark dispute for this very reason. The club had registered a trademark in 1982 for the word ‘CULE’ as a name for their fans for goods including clothing, bags and jewellery. In April 2011, an American company, Kule, applied for a European trademark in their name for the same goods. The football club, upon hearing of the application, filed an opposition however it was rejected in 2013 and denied the chance to appeal as they had not provided genuine evidence for the use of their mark in their designated categories for the past five years.

However, according to INTA, circumstances in which the non-use of the trademark may be unavoidable such as bankruptcy of the owner, labour strikes, a lack of demand, legal restrictions and the need to replace equipment are recognised by  some countries as excusable non-use including the EU for EUTMs (European Union Trade Marks).

Not using a trademark is the most common way in which a brand can lose its trademark rights. However a trademark can also be revoked if it is allowed to become generic, i.e it represents a category of goods in the marketplace rather than a specific brand and has therefore lost its distinctiveness in the marketplace.

Furthermore, a mark can also be revoked through failure to control the use of a licensed trademark, known as “naked licensing”. In this instance the licensor would have failed to control the quality  and nature of the goods or services being produced, or let the mark lose its function as a source identifier, for example, by allowing it to be pluralised.

Firstly, in order to reduce the likelihood of your trademark being revoked you should use it. If you do not want to use your trademark  you should either surrender it by contacting the appropriate trademark authority or sell it to someone who is going to. If you plan to use your trademark but are as yet unable to, you should keep a file of documentation that can be used as future proof of use. Possible proof of use can include documentation regarding purchased advertising for the trademark, internal presentations, licensing agents, distributors and regulatory approval proceedings. Furthermore, you should encourage your consumers to only use your brand name when talking about your brand and not the class of goods of goods or services into which your product falls. Lastly, when licensing your trademark be sure to regulate its use and monitor the quality and nature of the goods or services being produced on a regular basis.

For advice and more information on searching, acquiring, registering and enforcing Trademarks please visit our website, http://www.lipex.com.


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