An interesting recent legal case helped highlight a potential issue you might like to be aware of. It clarified a potential grey area around what’s called ‘genuine use’ of owned ‘trade marks’.
Although, in this case, the trade-mark owner was judged entitled, it does highlight the possibility one might not be. And also helps clarify what is deemed ‘genuine use’.
It’s a gentle reminder that some use does need to be made, ‘as failure to make genuine use of a mark for five years can mean it could be revoked’.
Bear this in mind. ‘The burden is on the trade mark owner to prove there has been genuine use’.
Here’s what happened, according to our recent ICAEW Legal Alert.
In this case, one company ‘applied to cancel a rival’s European Union trade mark registration on grounds it had not made genuine use of the mark’, reads the Legal Alert.
The trade-mark owner disputed this. It ‘argued that there had been genuine use because the mark had been used while planning the launch of a new clothing range, including at a clothing trade fair where it was seen by various retail professionals.’
Two issues emerged from this:
1. Is it genuine use if no consumers see it?
2. Also, even if they do, would a small mention on an inside label constitute visible use?
‘Initially,’ says the Legal Alert, ‘the relevant panel ruled that there had not been genuine use. As the launch had not actually taken place the goods had never actually been offered to consumers. This meant the use was not genuine use, but merely ancillary use. Even if the launch had gone ahead, use of the mark on small labels sewn into clothes would not have been noticeable to consumers.’
But the ‘General Court disagreed’.
Its rulings help clarify for any trade-mark owners going forward:
• ‘There was no ‘end consumer’ test that had to be satisfied before there could be genuine use of a trade mark
• It was not necessary for products bearing the mark to have been launched’
So, as long as you’re genuinely using the mark in developing your products, that’s enough to warrant your continued ownership.
‘It ruled that provided the use that had been made of the mark was warranted as a means of creating or maintaining market share in the relevant sector, it was not necessary for all use of the mark to be directed towards end consumers. It was sufficient if it was directed towards professionals such as specialists or industrial resellers. In this case, there was therefore evidence of genuine use.’