Insight

Proof of use essential to retain trademark rights

Organizations use trademarks to further distinguish their products and services. But you cannot automatically assume that you can always retain that trademark right. Big brands like Apple and McDonald's were caught off guard in recent years when the European Court ruled that they did not have their proof of trademark use in order.

Apple and McDonald’s

In June 2022, the European Court of Justice (CJEU) dismissed several appeals filed by Apple Inc. Earlier, the European trademark office (EUIPO) ruled that the trademark ‘THINK DIFFERENT’ had lapsed because Apple had failed to properly prove its use. Apple thereby lost its trademark rights to the trademark. Another example is the 2019 decision, when the EUIPO stripped the trademark ‘BIG MAC’ from McDonald's for the same reason.

Preventing proof problems

The use of trademarks in Europe must be proven in two situations: when an interested third party has initiated invalidity proceedings, or when the owner of a newer trademark contests the use of the earlier trademark.

In these cases, the trademark owner is given a period of several weeks by the trademark office or the court to prove the use. Sometimes that means quickly obtaining the relevant company documents.

Collecting materials for proof

In Europe, trademark owners must be able to prove that their trademarks have been used in the country for the goods and services for which they are registered from the fifth year after registration. Proof of use always covers the period of the last five previous years. Evidence that falls outside the relevant period or scope of products and services is considered by trademark offices and courts for information purposes only.

It's good to know that, for an EU trademark, use must be demonstrated for a significant part of the Community market. Proof of only one market is not sufficient.

Suitable items of evidence for products include:

Dated or datable country-specific documents. These should show the trademark, such as on customer orders, invoices, catalogs, advertising flyers, documentation of trade show appearances, and poster advertising;
Examples of product packaging. These should include the time they were printed (e.g., printer's bill), newspaper ads, TV and radio spots, websites, and social media activities;
Sales figures achieved during the period in question in the geographical area relevant to the brand.

For services, use of the brand can be further documented, such as through stationery, work clothing, inscriptions on cars, and service desks.

Familiarity and “self-knowledge” are irrelevant

The evidence Apple provided proved too meager to retain the ‘THINK DIFFERENT’ brand. For example, the worldwide sales and revenue figures of its iMac Computers did not refer directly to EU sales. For McDonald's, the Court ruled that the listing of the ‘BIG MAC’ trademark on their website only sufficiently proved that the trademark had been offered for sale but not that it was actually in use in the EU.

For major brands like Apple and McDonald's, these decisions may come as a surprise. Because of their reputation, they probably assumed that the European Trademark Office or the European Court itself would be familiar with the use of the trademarks. However, this “self-knowledge” of the deciding authorities is irrelevant. It is precisely the high level of familiarity with a trademark that often causes trademark owners to be negligent in submitting use material to the Trademark Office or the courts.

Archive in order

It is advisable to continuously archive usage documents (digitally) and also make distribution partners and licensees aware of this. We are happy to assist you in setting up a usage archive and in compiling and evaluating usage documents. Please feel free to contact us for this.