Proof of use of a trade mark

Proof of use is the demonstration, required from the proprietor of a trade mark registered for at least five years, that the sign has been put to genuine use for the goods or services relied on. It may be requested by the other party in opposition proceedings, an invalidity action or an infringement action, and it lies at the heart of revocation proceedings. The French Intellectual Property Code and Regulation (EU) 2017/1001 govern it under rules harmonised by Directive (EU) 2015/2436.

Proceedings in which proof is required

In opposition proceedings, the applicant may request the opponent to prove use of its earlier trade mark if that mark had been registered for at least five years at the filing or priority date of the contested application. The same option is available to the defendant in an invalidity action based on an earlier trade mark and to the defendant in an infringement action, which often shifts the debate towards the reality of exploitation. In revocation proceedings, the burden of proof also lies on the proprietor, who must show genuine use during the relevant five-year period.

Content and quality of the evidence

The evidence must concern the place, time, extent and nature of use, criteria applied by both INPI and the EUIPO. Useful evidence includes invoices, catalogues, advertisements, dated screenshots, sales figures and documents showing the sign as affixed to the goods or used for the services. A statement by the proprietor or its managers has only limited probative value when it is not corroborated by objective evidence. Use in a modified form is accepted where the differences do not alter the distinctive character of the trade mark as registered.

Effects of insufficient or partial proof

Failing proof, the opposition or the invalidity application based on the earlier trade mark is rejected, and the infringement claim is rejected to the same extent. Where use is established for only some of the goods or services, the trade mark is deemed registered, for the purposes of the proceedings, only for that part, which narrows the scope of the comparison. The proprietor may, however, rely on proper reasons for non-use, strictly understood as obstacles beyond its control.

Key points

Proof of use can be required as soon as a trade mark has been registered for five years. It rests on dated, objective evidence showing the sign in context, in the relevant territory, with sufficient intensity. Such evidence should be archived as exploitation proceeds, without waiting for a dispute, and the age and use status of earlier trade marks should be checked before any opposition or action. An unused trade mark weakens its proprietor’s position in all litigation.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats is a patent litigation firm. Matters outside that field, such as trade marks, designs, copyright and IT contracts, are handled by practitioners the firm works with regularly, and by the firm itself when they arise in a patent dispute.

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