Intellectual property is not just formalities, paperwork and entries in registers. Once you have secured your trademark, the real game begins: to keep your market advantage you must actually use the mark, not merely display a framed certificate on the wall. There are clear rules on when a brand owner has to prove that its mark is alive in the marketplace rather than lying dormant.
Below we explain what the obligation to use a registered trademark involves, when and how you must show use, the relevant deadlines and formalities, and what is at stake if you stay passive. You will find answers to practical questions here.
After registration, both Polish law (the Industrial Property Law) and EU law require genuine use of the mark to begin within 5 years of the registration date and to continue without lengthy interruptions. A failure to make genuine use of the mark for a period of five years creates a risk of cancellationof the registration for those goods and services for which the mark is registered but not used.
A request for revocation may be filed by any person, and there is no need to provide a detailed justification. It is the trademark owner who must demonstrate use (the burden of proof).
NOTE: if the mark is registered to an individual (for example a company’s CEO) who does not use it himself, because only the company uses the mark, then a licence agreement should be put in place under which the trademark owner authorises the company to use the mark. Such an agreement, together with evidence of use by the company, allows the owner to show that the mark has been put to genuine use. Without a licence agreement, proving use by the owner can be difficult and in some cases even impossible.
China applies a “first to file” principle, and the obligation to use the mark arises only after registration. If a mark is not used in China for 3 consecutive years, any interested party may apply to have it cancelled. Use must be proven in a dedicated procedure that, on our clients’ behalf, has to be handled by an attorney from a local Chinese firm.
The US system is based on the “first to use” principle: protection belongs to whoever first genuinely used the sign in commerce. When applying, you must submit an Intent to Use declaration or a Statement of Use, together with evidence of actual use of the mark in trade (specimens, photographs of packaging and labels).
The Industrial Property Law provides that the owner of a registered Polish trademark has the exclusive right to use it in a professional or commercial manner throughout Poland.
Use of a trademark consists in particular of:
A trademark should be used in a form consistent with the registration, for the goods and/or services for which it is registered. Only minor modifications are permitted, provided they do not alter the essence of the mark and its distinctive elements.
Whether use of a mark in a modified version can be treated as use of the registered mark is decided by the UPRP and EUIPO on the basis of the Common Communication and Common Practice on the use of a trademark in a form differing from the one in which it was registered. That document contains a range of examples.
Before the UPRP and EUIPO, during an opposition or invalidity dispute concerning a trademark, the office may, at the request of the opposing party, require the owner of the trademark on which the opposition or invalidity request is based to file evidence of genuine use for the goods and services covered by the proceedings, provided that at least 5 years have passed since the registration date of that mark.
It is worth stressing that a failure to file evidence in a given set of proceedings does not automatically cancel the registration. It affects only the current procedure: the opposition or invalidity request will be dismissed by the office for those goods and services for which the owner of the earlier mark has not shown genuine use.
The requirement to use a trademark is the foundation of its legal protection in Poland, the EU, the US and China alike. A failure to meet it can lead to cancellation of the mark’s protection, in part or in full. Whether you run an international brand or are a local business, entrust your trademark matters to an experienced trademark attorney from what you consider to be the best IP firm, so that you can be confident of effective protection and an optimal strategy for using your mark in business.
Our IP firm in Poznań will help you register your trademark and protect your brand. Write to us!
For both trademark registration in Poland and trademark registration in the EU, genuine use must begin within 5 years of the registration date and continue without lengthy interruptions. A continuous period of non-use of five years exposes the mark to cancellation for the goods and services for which it is registered but not used.
In Poland and the EU, any person may file a request for cancellation on grounds of non-use after five years, in whole or in part. The applicant does not need to provide detailed reasons; the burden of proof lies with the trademark owner, who must demonstrate genuine use.
Use includes affixing the mark to goods or their packaging, offering and placing those goods on the market, importing, exporting and storing them, offering or providing services under the mark, using the mark on business documents, and using it in advertising and marketing.
Before the UPRP and EUIPO, failing to file proof of use does not automatically cancellation of the registration. It affects only the pending case: the opposition or invalidity request is dismissed for those goods and services for which the owner of the earlier mark has not shown genuine use.
Yes. If a mark is registered to an individual (for example a company’s CEO) but is actually used by a company, a licence agreement authorising the company to use the mark should be in place. Together with evidence of use by the company, the agreement allows the owner to prove genuine use; without it, proving use may be difficult or impossible.