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In recent months, we have seen an increased number of administrative cancellation actions for non use against our clients’ trademarks, mainly at EUIPO level. However, in the context of these actions, we have repeatedly noted that either the “attacked” trademarks are not exploited optimally or, in the vast majority of cases, that the proof of their uses is difficult to report even when these uses have a significant volume.

In almost all countries, however, there is a rule according to which a trademark that has not been exploited or has been badly exploited for a given period may result in the loss of the right and, therefore, the loss of the resulting competitive advantage. This situation therefore places trademark owners at risk at different stages in the life of a trademark….especially since the new European Directive  will soon allow third parties to intend cancellation action for non-use of trademarks through quick and inexpensive administrative procedures which until now have been available in most cases only before the courts.

You will note in this regard that the Benelux has already announced the opening of a cancellation and revocation chamber since  1st past and that the INPI should comply with the EU directive by 2019.

Within two years, it is therefore to be expected that revocation actions may be initiated in each of the EU countries in addition to those that may already be brought before the EUIPO against European trademarks.

For the record, a use is considered as validating a registered trademark when it is serious, unambiguous, public, in conformity with the sign as filed and for the goods or services referred to in the filing.

According to a study of the decisions rendered by the EUIPO, we were able to find that 50% of the “used” marks « attacked » in revocation were cancelled because the applicant was unable to provide sufficient proof of his exploitation!

In view of this observation, it is crucial for trademark owners to already study the evidence of use of their rights in order to determine the potential existence of a”flauw” and, in a second step, to determine the actions to be taken in order to fill a gap in use.

This work has a triple objective to know:

  • To be aware of the areas in which there is a problem of use
  • To set up a use policy adapted to the different types of brands and the different territories of interest
  • To perpetuate its trademark rights and thus increase their value (in the context of an asset valuation, vulnerability is a criterion for depreciation).

And, consequently, to serenely apprehend the next evolution in the practice of trademark offices.

 

Celine BAILLET, European Trademark Attorney Inlex IP Expertise

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