What is a lapse for misuse?
A mark must be used so that it can be preserved. A discontinuance of use of a mark for 5 years or more allows any interested third party to apply to the court for the forfeiture for non-use. As a result, the owner will lose his rights to the trademark for the future, which may be used by someone else.
To find out more about the obligation to use, consult our dedicated fact sheet : the obligation to use a mark.
Is the lapse automatic?
No, it takes a person request. A mark does not automatically disappear if it is not used.
Furthermore, the disqualification cannot be requested:
in France, before the end of the period of 5 years as of date of publication of the registration
in matters relating to the Community trade mark, before the end of the period of 5 years as of record date
What is the procedure for disqualification?
To request the forfeiture of a French trademarkyou have to go in front of the TGI (Tribunal de Grande Instance), with the obligatory assistance of a lawyer. The procedure is long and can become costly if the opponent defends himself.
For a EU trademarkyou have to apply to theEUIPO (formerly OHIM) by completing a form.
In both cases, the applicant merely requests for disqualification for non-use. without having to provide of specific evidence. Indeed, it is impossible for the applicant to prove that a trademark is NOT being used. It is easier to prove that it is. It is therefore up to the defendant (the proprietor of the trade mark subject to revocation) to submit proof of use.
What are the conditions for proof of use?
First of all, the evidence of use is dated documents that allow us to determine that the mark has been used for a certain period of time. In this case, it is the last 5 years prior to the application for revocation.
In addition, they must mention the brand name as filedand in relation to thegoods and services covered by the deposit. There is no need to prove use for goods that would not be protected by the trademark.
Evidence of use may be invoices clearly individualizing the products advertisements or announcements published in magazines or newspapers, in the press reviewss, of the cataloguess, of the labelss, of the packaging... Figures such as the sales turnover of the company, the sales volumess, the price lists and theadvertising expenses are also important. You can also use polls and to affidavits (e.g. from distributors or suppliers).
The essential point is to report on a significant useThis means that it is used commercially (and not just internally) extensively, extensively and frequently. If, for example, the trademark has been used only for a very short period of time, or even for a single event, there is a good chance that the serious use will not be retained. Note, however, that a low volume of use can be compensated by a high frequency of use, and vice versa.
Finally, it should be noted that the INPI is much less severe in the study of evidence of use than the EUIPO or the courts. Thus, the filing of proof of use requires very little argumentation before the INPI, whereas the EUIPO asks for detailed arguments, and is much more focused on the specific products that are the subject of proof of use. And for good reason: in France, the INPI is not competent to assess the content of proof of use (if one of the parties contests it, one must go before the court, which alone can be seized of a revocation action), whereas at the European level, the EUIPO has the power to declare the revocation of a trademark.
If my trademark is only partially used, will it lapse completely?
No, if the defendant can prove the use of his mark for only part of the goods and services referred to in the wording, then the mark will not be revoked. that for products and services for which no proof of use has been submitted.
How to prevent the risk of forfeiture for non-use?
There are several solutions to be implemented to avoid this risk:
to regularly add to a file of proof of use. We have seen companies throw away their archives after a move, for example, and lose important evidence of their past use.
regularly check the conditions of use Is it sufficient, does it relate to the goods and services referred to in the wording?
If the goods or services have changed, it is time to consider re-filing the trademark.
If the use is insufficient, ask yourself the right questions: do you want to abandon this trademark or revitalize it? In the second case, it is advisable to set up a campaign to this effect (new product, advertising...).
as much as possible, not to change the appearance of the brand. Indeed, the trademark must in principle be used as filed. Consequently, if the trade mark is used in a modified form, that new form must not alter the distinctive character of the trade mark applied for. In other words, the new form used must not differ from the trade mark applied for in respect of important elements which would bear the distinctiveness of the trade mark.
For example, for a trademark whose distinctiveness would reside in the logo, if the latter is heavily modified or even replaced by another, then a judge will consider that the use of the modified form does not prove the use of the trademark.
In such a case, the proof of use you would submit would not be admissible. Therefore, if you find that you have significantly altered your trademark, you should consider re-filing as a security measure. Obviously, the assessment of the impact of the modifications is done on a case-by-case basis and remains at the discretion of the judges.