Industrial property rights offer the unique opportunity, sanctioned by law, to enjoy the benefits of a monopoly on the protected object. However, if the relevant requirements are not met, the monopoly will also come to an end sooner or later, or it will become apparent at the most unfavourable moment that it is only a sham right.
Prevention is better than cure - this applies to health care as well as to industrial property protection, both with regard to the requirements that a diligent IP right holder must fulfil, as errors or inadequate precautions can often cause considerable economic difficulties for the company concerned or even destroy its existence - not to mention the frequent liability of managing directors.
Brands have „added“ value
Trade marks are not only important for a company to differentiate, advertise and position its goods and services on the market, they often also embody a high economic value and are generally not easy to replace. The moment of truth is usually the moment when action is to be taken for the first time against a younger, confusingly similar trade mark with an opposition to registration or later with an application for cancellation or against an infringer for injunctive relief. The party attacked in this way then usually defends itself with the Non-use defence, whereupon the proprietor of the earlier trade mark must provide (unsolicited and conclusive) evidence of genuine use for the last five years. If this is not successful, not only the Injunctive relief, The opposition or the cancellation request is rejected, but the challenged party (or any third party) now knows that the valuable earlier trade mark, which in case of doubt has been used for many years, has lapsed and is ready for cancellation. The bitter rest is a formality.
Evidential proof of use
In order to avoid this nightmare scenario in advance, it is necessary to have conclusive evidence of the goods and services in question. Proof of use, ideally with a date stamp, which can be compiled quickly if required. This includes all documents that represent the scope of use over a period of at least one year, such as invoices, sales and turnover figures, insofar as they are accessible for publication.
These are then Proof of the seriousness of use. In terms of content, dated brochures, packaging, photos of products (e.g. together with a current daily newspaper) or similar items are suitable for showing the use of the trade mark as such and not just as a business identifier. In any case, the trade mark must be recognisable as it is entered in the register and there must be a reference to all goods or services. There are deviations from this general statement in individual cases, as there is a sophisticated system developed by the extremely extensive case law on trade mark law as to what is still to be recognised as use for which goods. In cases of doubt, this then only leads to a partial cancellation of the trade mark for the goods or services concerned for which proof of use has not been provided.
An advantageous side effect of a regular, at least the review of the trade mark and the existing proof of use every four years is also to determine whether the actual use still corresponds to the status of the trade mark in the register. For example, if use is extended, e.g. by completely new products or services that are not entered in the register, a new trade mark must be applied for in good time before someone else does. If, on the other hand, it is established that certain classes of goods or services are no longer used at all, this can be waived in order to save costs in the event of a renewal.
Author: Hans-Peter Gottfried (Patent Attorney, Dresden)
