How to keep your trademark safe

20.11.2023

Getting your trademark registered is often the easy part – keeping it protected is another story. Brand owners need to watch out for non-use claims, bad-faith filings, and several other potential pitfalls.

The basic principle behind registering a trademark is to provide its owner with the exclusive right to use that mark for specific classes of goods and services. It’s a key tool for protecting brand identity and sales.

But there are obligations, exceptions and limitations associated with the principle, so it’s essential to understand the full scope of trademark rights and protections in any country where you do business.

Perhaps the most important obligation for a trademark owner is the requirement to actually use the mark. In Europe, a trademark owner is not required to start using the mark immediately after registration. There is a grace period of five years. After this, proof of use is required if a third party demands it.

“It’s important to remember that the burden of proof showing use of a registered trademark belongs to the trademark holder,” says Jussi Mikkola, European Patent Attorney and Partner at Papula-Nevinpat.

“If somebody files a non-use cancellation action against your trademark, you need to provide a sufficient amount of objectively observable evidence to prove use of the mark for the goods and services it was registered for.”

“Usage of the trademark must correspond to the scale of its owner’s business operations. In other words, if you’re selling a lot of goods you need to provide more evidence of use than, for example, a trademark for rare or unique goods or services,” he says.

The European Trademark Directive does not include an exhaustive list of what is accepted of evidence. Proof of use is always tackled on a case-by case-basis. But trademark owners should be able to present invoices, advertising & sales brochures, customer-facing media and any other materials that display the mark. It’s important for the evidence to be dated correctly.

Know the rules and act quickly

Another important obligation for trademark owners is to take action immediately if misuse or infringement of their trademark is suspected. This is because failure to act can be used as an argument for non-use.

“Act promptly if you notice that someone is infringing your trademark, as usually this makes it easier to solve the problem,” advises Mikkola. “If your action takes time, the infringer may establish their own business around the mark and may gain rights to it through earlier use claims. In such a case they will not give up without a fight.”

Being a large global brand is no guarantee of winning a trademark battle. McDonald’s and Amazon have both lost cases in certain jurisdictions because they could not provide sufficient proof of use, or did not do so punctually enough.

Another important rule is that a mark should be used for all the classes of goods and services for which it is registered. Failure to use the mark in a specific class may leave the door open to litigation.

“There was a case in Finland where a pharmacy demanded cancellation due to non-use of a very widely recognized retail brand,” says Mikkola. “It was essentially a question of the retail group not being able to prove that it used its mark in all 25 different classes.”

“The result was that the retailer lost its right to use the mark in all but class 35, which covers retail sales of different goods. This is a good reminder that the trademark should be used for all the goods and services it’s registered for,” he cautions.

An important point for international companies is that the owner of a trademark also has a right to forbid a third party from importing or exporting goods under that mark.

“About a decade ago, a Finnish brand that produced its goods in China was blocked from exporting to Finland. A Chinese entity had managed to register the Finnish company’s trademark in China, where the company had not protected its trademark as they had no sales in the country,” recalls Mikkola.

“The Chinese entity had used their right as the owner of the registered trademark to ask Chinese customs not to allow any of the Finnish brand’s goods to be exported from China,” he says. “The Finnish company essentially had to negotiate a license agreement to get their own goods out of the country.”

“It was an expensive and frustrating lesson in the wide rights that registering a trademark brings. Fortunately there is now a new law in China that makes it easier to tackle these so-called bad faith filings. That said, it’s still essential to register your trademark in China,” Mikkola adds.

A system that’s difficult to trick

It’s important to note that a trademark must be used in its registered form, without altering the distinctive character of the mark. Some brand owners may try to circumvent the obligation for proof of use by slightly or completely altering their mark. Others may try to file a new trademark application for an identical mark. Neither of these tactics typically work.

“The EU Intellectual Property Office is very strict towards any kind of altering requests done by trademark owners. Once you file the trademark application, that’s usually the version that’s protected and you’re not allowed to make changes to it,” says Mikkola.

The practice of trying to register a trademark identical to the old trademark – something we call trademark evergreening – may be considered a bad faith filing,” he adds.

Some companies provide services that use specialized software to monitor new trademark applications worldwide. They also scan online marketplaces like Amazon to identify potentially infringing trademarks and issue notifications to owners. Mikkola says these services can be useful, but that a strong business and partner network is often enough for staying informed.

“My recommendation is to establish sufficient channels for your resellers and other affiliates in different geographies to easily report if they notice a possible trademark infringement,” he says. “This way you get the information promptly and can do whatever is required to stop the misuse.”

You can also watch the recording of our IP webinar, Maximizing trademark protection: Your post-registration roadmap, here.

For any further information, kindly contact Jussi Mikkola, we are here to help you.

 

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