Provisions relating to the Use of the EUTM
Article 18 EUTMR provides that an EUTM is to be put to genuine use in the European Union by its proprietor in connection with the goods or services in respect of which it has been registered. If no such use is made within a period of five years following registration, or if use is suspended for an uninterrupted period of five years, the EUTM shall be subject to certain sanctions unless there are proper reasons for non-use.
Use of an EUTM with the consent of the proprietor shall be deemed to constitute use by the proprietor. The following shall also constitute use: (a) use of the EUTM in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trademark in the form as used is also registered in the name of the proprietor; (b) affixing of the EUTM to goods or to the packaging thereof in the EU solely for export purposes.
Non-compliance with the requirements for use referred to above shall be grounds for revocation of the EUTM (Art. 58.1(a) EUTMR). Revocation may be requested on application to the EUIPO or on the basis of a counterclaim in infringement proceedings. Nevertheless, no person may claim that the proprietor’s rights in an EUTM should be revoked where, during the interval between expiry of the five-year period and the filing of the application or counterclaim, genuine use of the trademark has been started or resumed. The commencement or resumption of use within a period of three months preceding the filing of the application or counterclaim which began at the earliest on expiry of the continuous period of five years of non-use shall, however, be disregarded where preparations for the commencement or resumption occur only after the proprietor becomes aware that the application or counterclaim may be filed.
Non-use of an EUTM may also have adverse effects in opposition and invalidity proceedings. Pursuant to the provisions of Art. 47.2 EUTMR, if the applicant so requests, the proprietor of an earlier EUTM who has given notice of opposition shall furnish proof that, during the period of five years preceding the date of filing or of priority of the EUTM application, the earlier EUTM has been put to genuine use or that there are proper reasons for non-use. In the absence of proof to this effect, the opposition shall be rejected. If the earlier EUTM has been used only in relation to part of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.
In the case of invalidity proceedings, Art. 64.2 EUTMR establishes that if the proprietor of the EUTM so requests, the proprietor of an earlier EUTM, being a party to the invalidity proceedings, shall furnish proof that, during the period of five years preceding the date of the application for a declaration of invalidity, the earlier EUTM has been put to genuine use in the Union in connection with the goods or services in respect of which it is registered and which the proprietor of that earlier trademark cites as justification for his application, or that there are proper reasons for non-use, provided the earlier EUTM has at that date been registered for not less than five years. If, at the date on which the EUTM application was filed or at the priority date of the EUTM application, the earlier EUTM had been registered for not less than five years, the proprietor of the earlier EUTM shall furnish proof that, in addition, the conditions set out in Article 47(2) were satisfied at that date. In the absence of proof to this effect, the application for a declaration of invalidity shall be rejected. If the earlier EUTM has been used only in relation to part of the goods or services for which it is registered, it shall, for the purpose of the examination of the application for a declaration of invalidity, be deemed to be registered in respect of that part of the goods or services only.
The provisions relating to proof of use of the earlier trademarks in opposition and invalidity proceedings against EUTMs shall also apply to earlier national trademarks on which the proceedings may be based. In such cases, the proprietor of the earlier national registration who has filed opposition or made application for a declaration of invalidity shall, at the request of the proprietor of the later EUTM application or registration, furnish proof of use of his national trademark in the framework of the said opposition or invalidity proceedings.