No proof of use? Be prepared to lose your trade mark

Once the five-year grace period has expired, third parties can file a request with the IPI for the cancellation of a trade mark due to non-use (in accordance with Art. 35a in conjunction with Art. 12 para. 1 of the Trade Mark Protection Act). The company under attack then has to provide the IPI with prima facie evidence of the use of its trade mark. It’s therefore imperative for all trade mark owners to document any use to avoid possible cancellation.

“Many trade mark owners aren’t aware that they might have to prove the genuine use of their trade mark,” says trade mark lawyer Birgit Weil. The issue is often not the use of the trade mark itself, but a lack of proof of its use during the period in question. That’s how trade mark owners can end up in trouble.

Collecting and saving data on the use of a trade mark in a company is an interdepartmental effort: the finance department will have data on sales relating to the trade mark, while the marketing department will have information on advertising campaigns. According to Ms Weil, price lists, invoices, delivery notes, packaging, catalogues, advertising material and website screenshots are all suitable forms of evidence. These should primarily show the location, time, extent and type of use of the trade mark. Attempting to make up for insufficient documentation by conducting lengthy and costly research is not always a recipe for success.

Caution is advised if you’re thinking of changing the trade mark retrospectively. “A trade mark is only ‘genuinely used’ if it’s used as it was entered in the register or at least in a form that’s not considerably different,” says Birgit Weil. If you adapt the appearance of a trade mark during its use, combine it with other elements or leave out elements, you may no longer be able to claim genuine use. “In that case, it’s advisable to register the adapted version with the IPI,” Ms Weil points out.

For companies with a trade mark which is identical to their name, use is often merely a reference to the company and not genuine use as a trade mark. This can be counteracted by consistently using the name as a trade mark, by combining it with simple elements such as ‘our trade mark’ or with the symbol ®, which stands for registered.

Birgit Weil hopes that trade mark owners will start paying more attention to the obligation of use. “A trade mark is one of a company’s most important assets. They put a lot of money into establishing and publicising them. It would be a real shame if, years down the line, their trade mark were to be cancelled simply due to a lack of evidence.”