Importance of Use of Trademarks in Germany and the EU

November 10, 2016
Categories: 
Brand, German Patent and Trademark Office, German Trademarks, Intellectual Property Law, IP Rights, Trademarks
Tags: 
Trademarks, Trademark Use, Proper Use of Trademarks in Germany, the EU, Markenbenutzung, Benutzung von Marken
Post date: 
10. November 2016 - 18:22

Trademark Use in Germany and the EU - Why brand owners must use their trademarks

Trademarks present a link between a brand owner and its consumers. They are the easiest way to differentiate one product from another and one competitor from another, at the same time creating customer loyalty and strengthening of the brand. However, why do brand owners actually need to use their trademark if it is registered? This article tackles the importance of genuine trademark use and how to prove use in Germany and the EU.

How do you receive trademark protection in Germany and the EU?

To get exclusive proprietary rights to a trademark, you have to register it with a designated intellectual property office. If you are seeking for protection restricted to the German territory, the appointed IP office is the Deutsche Patent- und Markenamt (DPMA; English: GPTO). In case you are looking for protection expanded to the whole territory of the European Union, the registration must be conducted by the European Intellectual Property Office (EUIPO). The third option is registering the trademark internationally, with the World Intellectual Property Office (WIPO), with Germany or the EU assigned as the designated countries.

Whichever path you choose, the formal application requirements include concrete data of the applicant, a representation of the desired trademark and a list of the goods and services for which protection is sought.

The IP offices only check if the applied trademark complies with the legal requirements (is the applied trademark eligible for protection, is it distinctive and undescriptive) and do not research if it infringes a previously registered trademark. If the application is admissible, the IP office will publish it. It is up to the owners of the earlier trademarks to oppose the application if they believe it is infringing their rights.

In case there are no opposition proceedings or the proceedings get rejected, the trademark will be registered.

The registration process with the DPMA usually lasts for 7 or 8 months, but exceptional cases might take longer.

Why is genuine use so important?

Whether talking about the German definition of “serious use”, or the EU definition of “genuine use”, the essence stays the same. Genuine use is, according to the European Court of Justice (ECJ), the use that is not serving solely to preserve the rights conferred by the mark. Such use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the product or service from others. Genuine use of the mark entails use of the mark on the market for the goods or services protected by that mark and not just internal use by the undertaking concerned. (MINIMAX case, C-40/01, of 11 March 2003; link: http://curia.europa.eu/juris/showPdf.jsf;jsessionid=9ea7d2dc30ddf4dba4e35fa142cd9e05fb76a892d278.e34KaxiLc3qMb40Rch0SaxuTbNn0?text=&docid=48120&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=188264 )

Contrary to other countries around the world, the specific set of trademark legislation in Germany and the EU privileges the trademark applicant and owner. He does not have to use the mark for the first five years of its existence (during the so-called “grace period”). After the grace period finishes, the trademark is open to legal action against it.

However, not using the trademark, even within the grace period, has its consequences for the future. If you do not use your trademark properly, you can, it the worst case scenario, lose it. After the passage of five years, you could have the trademark cancelled on the grounds of non-use. Another consequence of non-use is the reverse situation to the previously mentioned. In case the trademark owner is the one who wants to file for opposition or cancellation, his request might be rejected as unjustified and foundationless.

How do you prove use?

The following criteria regarding use serve as auxiliary examples. In this respect, the actual circumstances regarding the use, in particular relating to the extent, time period / duration as well as kind of use have to be submitted.

_____________________________________

DURATION

When has the mark been used?

 

Use of the mark has to be proven for usually at least the last 5 years

GOODS / SERVICES

For which goods/services has the mark been used?

 

Please indicate the exact goods/services which were marked with the trademark and provide examples of that use, e.g. illustrations or photographs of packaging.

EXTENT

How much and how intensively has the mark been used?

           

 

Please indicate the extent of use, in particular sales figures or also the number of items, each broken down by years, for the goods/services marked respectively.

MODE

How and on what has the mark been used?

 

Was the used on the goods themselves, their get-up or their packaging, on invoices, in flyers or other advertising material?

How was the mark affixed in these cases?

The mode of use (affixing to the goods or their packaging or other use common in the specific branch) should be rendered recognizable. The mark as used must have been used identically or similarly in relation to the registered mark, i.e. it may deviate only slightly from the mark in its registered form.

 

PERSON

By whom has the mark been used? By the trademark proprietor himself or by third parties?

 

Use by licensees is considered use by the trademark proprietor.

PLACE

Where has the mark been used?

 

The mark must have been used in that particular country for which it is registered, i.e.

  • a mark registered at the German Patent and Trademark Office must have been used within Germany;
  • a Community trademark registered at the Office for Harmonization in the Internal Market must have been used within the European Union; the use in one member state of the EU is (currently) considered sufficient;
  • an International Registration must have been used in the particular country for which genuine use is contested.

It is important to compile the materials regarding the use as diligently and completely as possible. Generally, the trademark proprietor is adversely affected by any potential deficiencies and doubts regarding the use.

What kind of materials proving use are necessary?

The following materials are suitable for showing the factual circumstances of a use as a mark for the exact goods/services in connection with extent, duration as well as kind of use, based on the criteria of use mentioned above.

A. Statement of the factual cirumstances in the relevant time period:

  • Excerpts from sales tables (minimum sales figures may be sufficient), possibly also (minimum) sales figures per item
  • Invoices
  • Orders and order confirmations
  • Advertising material, ads in print media (e.g. in trade or specialized press)
  • Leaflets, brochures, (user’s) manuals, etc.
  • Illustrations of the mark on the goods themselves (photographs thereof)
  • Get-ups, packaging of the goods
  • CD-ROMs
  • Indication of an identically named domain and its respective date of registration
  • Indication of the domain traffic (“visits” and “page views”)
  • Website-content submitted as a file
  • Copies of websites which mention the mark and indication of date
  • Mentioning of the mark by third parties, e.g. in the press, in product reviews, awards
  • Trade fairs and exhibitions on which the mark was shown on or in relation to specific goods / services

B. Authentification of use via an Affidavit

  1. It must be a personal declaration of the signatory (not by the enterprise),
  2. relating to facts (no legal assessments) and
  3. based on the personal knowledge of the declarant (no hearsay).

Basically, the affidavit can support material forwarded to the respective office and/or court, e.g. by confirming under oath

  • the (minimum) sales figures, possibly also by (minimum) sales figures per item,
  • the exact goods/services as well as the
  • time period, broken down by annual figures, and the
  • country, in which the indicated sales were obtained.

IMPORTANT: Not every country accepts affidavits. In Germany, the German Patent and Trademark Office (GPTO) in general accepts affidavits supporting material forwarded. However, the European Intellectual Property Office (EUIPO) is stricter and due to its own discretion may limit the value and validity of an affidavit. Therfore, review of the documents in advance by an attorney specialized in the field of trademarks / IP is strongly advisable.

 

 

 

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