The obligation to use a mark

What is the obligation to use the trademark?

It is a rule which imposes on the owner of a trade mark, after a certain period of time, totrademark. In the absence of use, his mark may be fallen in court at the request of third parties. See on this subject our fact sheet on forfeiture for non-use.

Why is there an obligation to use the trademark?

There are two reasons for the rules on the duty to use:

• firstly, they allow trademark owners to benefit from within 5 years (see below) to start exploiting their brand. Indeed, it is not obvious for all applicants to exploit their trademark from the moment of filing. Sometimes it is filed as a precautionary measure for future exploitation (the time to set up a company or to manufacture its first production, for example).

• in addition, they make it possible toavoid than a brand owner, who wouldn't exploit it, monopolizes a name and may be set up against third parties indefinitely.

When is a trademark subject to compulsory use?

A French or Community trademark is subject to an obligation to use it after a period of 5 years from the date of publication of its registration (not to be confused with its filing date).

For example, a trademark filed on August 1, 2014 and registered on January 15, 2015 will only be subject to mandatory use as of January 15, 2020.

During this period of 5 years, the mark may be opposed to third parties without needing to prove use.

Therefore, if you attack a third party through opposition proceedings or legal action, you can do so even if you do not use the mark: the opponent will not be able to raise as an argument the fact that you are not using it. He cannot validly ask you to submit proof of use.

What are the consequences of the obligation to use?

Once the trademark is subject to a compulsory use requirement, you can no longer oppose it so easily against third parties. Indeed, if you attack a third party who has filed or used a trademark that is identical or close to yours, the latter is entitled to ask you to provide evidence of use of your brand. If you can't produce any:

• Before the INPI or the EUIPO, in the context of an opposition procedure: the procedure is closed without even studying the background.

• Before the High Court of Justice, during a legal action: the Judge pronounces the forfeiture directly of the mark and the action is dismissed. Such is taken who thought to take! So be careful to base your requests only on used trademarks.

Important: the only acceptable evidence will be that which demonstrates use within 5 years prior to the start of the procedure.

For example, your mark was registered on May 15, 2008. An opponent asks you to submit proof of use in a proceeding that started on July 28, 2015. You must submit proof of use that is dated between July 28, 2010 and July 28, 2015.

If the trademark has not been used during the 5 years prior to the start of the procedurethen the disqualification for non-use may be requested. See our fact sheet on this subject.

What evidence of use is accepted?

First of all, the evidence of use is dated documents that allow us to determine that the mark has been used within the last 5 years.

Proof of use can be invoices clearly identifying the products, advertisements in magazines, press reviews, etc. Figures such as the company's turnover, sales volumes and the amount of advertising expenditure are also important.

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 the trademark has only been used 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.

The practical importance of the duty to use

• In defence in proceedings Asking for proof of use from an opponent who would attack you does not cost anything, and may allow the proceedings to be terminated prematurely if the latter has been negligent (he has not made serious use of his trademark, he has not kept good proof of use...).

• In the context of a search for availability made prior to filing a trademark: if you notice an embarrassing earlier trademark, take the time to look at its registration date. If it has been registered for more than 5 years, go deeper into your search and try to find out whether or not it has been used in the last 5 years. If it has not, then the risks it represents for your project are greatly reduced. To find out more about availability research, go to our fact sheet on this subject.