You may think that having a registered trade mark means you no longer have anything to worry about. Well, I’m afraid not.

UK and EU trade marks (and indeed others) which have been registered for five years or more can be revoked. This means that a third party can apply to have a trade mark removed from the register if it has not been put to genuine use in the past five years, i.e. that the proprietor has not used it in relation to the goods or services for which it is registered.

This can be a huge blow, allowing competitors to register their own trade marks in place of revoked marks and monopolising the use of similar names. The burden of proving that a trade mark has been put to genuine use rests with the proprietor of the mark but does this mean that third parties can fire off applications at random to have them removed?

The CJEU recently decided in Maxxus Group GmbH v Globus Holding GmbH that this is a solid no. Addressing issues raised by the German referring court, the CJEU pointed out that the proprietor of the relevant trade mark is “best placed to adduce evidence in support of the assertion that its mark has been put to genuine use”.

Notwithstanding the above, the CJEU also said that just because the revocation applicant does not bear the burden of proof “does not necessarily release that party from the obligation to provide, in its application, a full statement of the facts upon which it bases its claim”. However, they followed that if the application is founded on the claim that the mark has not been put to genuine use, then this claim “does not lend itself to a more detailed statement”.

Ultimately, the CJEU indicated that a revocation applicant should not be forced to adduce evidence to prove that a mark has not been put to genuine use, for example by carrying out market research, and that there are procedural safeguards in place to deal with frivolous applications. These include summary dismissal, payment of costs if claims are rejected and up-front application fees.

The take home from all of this is therefore:

  • Be prepared to prove genuine use of your trade mark after 5 years; and
  • Whilst applications cannot be baseless, ultimately the onus is on the trade mark proprietor to prove genuine use so, once again, be prepared to prove genuine use of your trade mark.

This evidence should demonstrate, for example: the goods or services for which the trade mark has been used; financial turnover from sales of goods or services under the mark during the previous five years; evidence of advertising and marketing under the mark; sales invoices showing the mark in use for the relevant goods or services; temporal and geographical use of the mark; and how the trade mark is used, such as on labels, invoices and advertising materials etc.