Proof of use of a registered trademark
Documents of use in the grace period
Trademarks are meant to be used. This is because trademark registration can only ever be the beginning of building a successful "brand". Practically, the registration of the trademark serves mainly to prove a seniority, to prove that one has taken up the use of a sign before a competitor.
In most countries there is a period of usually 5 years after filing in which one does not have to prove the use of the trademark for enforcement (grace period). This is to allow the trademark owner to take action against competitors already in the build-up phase of his trademark, without having to prove a right-preserving use already at this early stage of the trademark build-up.
However, the following applies everywhere in the world: Without use, no trademark lasts or expires again.
On the date of registration of a trademark at the DPMA or the end of any opposition proceedings against the trademark, a 5-year grace period for use comes into force. This means that the trademark owner does not have to use the registered trademark immediately and can still assert rights from it. It is therefore possible to secure trademark rights even if the trademark is not used immediately, e.g. because the company is still in the development phase or the product launch does not take place until a later date.
In order to meet the rights-preserving requirements of trademark law, however, the trademark owner must introduce the trademark to the market and use it within these 5 years from registration. Otherwise, the trademark protection may lapse. For example, a request for cancellation due to revocation filed immediately after the expiry of the grace period for use could lead to the lapse of a trademark whose use was not seriously commenced during the grace period for use.
Therefore, even during the grace period, the collection of documents relating to use is absolutely recommended. At least it should be started during the grace period and of course continued later.
It is therefore advisable to establish a routine for collecting and storing usage documents at an early stage. Successful uses should therefore always be documented and archived - regardless of the grace period for use.
Evidence of use of a registered trademark
Which documents should now be archived to document the use? Basically, there are no clear rules here. Anything that can be used to prove use can be helpful.
But what is meant with "use"? Use of a trademark is the use of a trademark to identify goods and services in order to create a recognition value. Or put another way: The customer should want a product or service because it is a branded product.
The most elaborate way to prove use is to investigate the opinion of the market. This is also referred to as surveying the relevant public. Such market surveys are time-consuming and expensive and often this way is only possible for very well-known trademarks. For most trademarks registered in the register it would probably be difficult to provide such evidence - nevertheless they are considered as used trademarks.
In practice, therefore, other evidence may often be used. As a general rule, one should prove that the trademark has been used in the market for the relevant goods and services. Brochures with illustrations of products and photographs of products are very helpful. If possible, the context in which the brochures or photos came into contact with customers and when should also be documented. Photos showing a product with a visible trademark in the supermarket - together with credibly documented and provable information regarding the time and extent of the presentation - are certainly better proof of use than product packaging photographed in the studio of the advertising agency.
Screenshots of websites like Amazon or Ebay along with the date they were taken or even retrievable via a credible wayback machine documenting the state of the internet at time "X" can also be very helpful.
Rounding off any good usage documentation is documentation regarding the economic volume. How many products and services did you sell in the respective period? How much turnover was achieved with them? How many individual services (product sales or services) did you provide in this context? All this should be documented.
In particular with wordmarks, it makes sense to strategically place the brand name on invoices as well. On the one hand, this helps with proof. On the other hand, it also serves to remind the customer of the brand name. Often, old invoices are also used on the customer side to find out where a product is offered.
So not only do you secure proof of use, but you may also be supporting your brand building.
Use of the proofs of use
In Germany, it is not necessary to submit proof of use to the Patent Office in order to renew a trademark. So if your trademark is accepted in competition, you may never have to submit the proofs of use, at least in Germany, at least not for the renewal of the trademark.
This is different in many countries. The USA, for example, also regularly require proof of use when renewing the trademark, whereby particular importance is regularly attached to the representation of the trademark on the product. Comparable requirements are made in many places.
In Germany, too, proof of use becomes important whenever a trademark dispute arises. For example, you are bothered by a competitor's recent trademark application and want to file an opposition against it?
If your trademark is more than 5 years old, the owner of the younger trademark may raise the use defense and you will have to prove the use of your trademark if you want to prevent the registration of the younger trademark. If you fail to do so, the applicant for the younger mark may go on the counterattack and request cancellation of your mark. A very annoying situation - especially if it only occurs due to insufficient evidence of use. In any legal dispute with trademarks, it should therefore be considered which uses have occurred and are occurring as well as whether and how these uses can be proven.
Even if you want to sell a trademark, the use documentation is of considerable importance. If, for example, you can prove a complete use of the trademark in the form of precise documentation, the buyer acquires a secure right. If, on the other hand, you only offer the registration of an old trademark for sale, from the buyer's point of view this is ultimately not much more than an option to become active yourself. Competitors may have obtained intermediate rights or (in case the trademark is ready for cancellation) possibly also earlier rights.
We recommend that you regularly analyse the usage situation of your trademarks with experts. We are not only concerned with the documentation of your acts of use. Often, even small changes in the processes are possible, which already allow a considerable improvement of the documentability of the use, if necessary, but also of the type of use itself.
Good use of a trademark not only has the effect of preserving rights, but at the same time it also improves the effect of the trademark in the market and thus increases the brand value.
Über Justus Kreuels:
Justus Kreuels, Patentanwalt und European Patent Attorney, studierte Maschinenbau an der Technischen Universität München (TUM) und an der Rheinisch-Westfälische Technische Hochschule Aachen (RWTH). Er setzt sich verstärkt für die Durchsetzung von Schutzrechten aus dem Bereich Mobilfunk, Internet of Things (IoT), Robotik, etc. in Deutschland ein.