Use it or Lose it

A trademark is a powerful asset for any brand. However, this valuable protection comes with responsibilities, so that if you don’t use the mark in the way required by the law, you stand to lose it.

This is the approach of the law because the trademark registers are cluttered. It would deplete the available names further if people could simply register trademarks and not use them.

So, it’s important to take this rule on board. The legal system places the onus of proof on trademark owners to show that they’re genuinely using their trademark once it passes its fifth birthday. So, your trademark loses its power and could be cancelled if you can’t prove use.

I always advise clients whose trademarks are 5 years old, to maintain a record of sales receipts, advertising and other promotional copy, and marketing activity so that if they need to enforce their trademark against bad actors, or if someone challenges their registration, they have the material to hand to prove use.

Proof of use is needed for each classification description in the registration, otherwise you lose protection of a class for which you lack proof. For example, say you’ve registered your trademark in class 25 for clothing and class 14 for jewellery but can’t prove use of the mark in one of these classes. That class will effectively be liable to deletion from your trademark.

McDonald's is a well-known company that lost its trademark for lack of proof of genuine use. Following an 8 year battle in the EU it has lost its “Big Mac” trademark. The company was unable to provide adequate proof of genuine use in Europe with the upshot that others may now freely use the term “Big Mac” in the EU.

What Does “Genuine Use” Mean?

Genuine use means the trademark (in the form in which it was registered) is actively used as a recognisable brand indicator—visible to customers through packaging, advertisements, and promotions. The burden of proof lies with the brand owner, not the challenger, making it essential for companies to keep detailed records of usage to defend their trademarks if contested. 

It's essential to use your trademark as a designation of origin—that is as the name, logo, and/or tagline that identifies your products or services. The mark must be easy to see so it can be recognised at the point of purchase. 

I reported on the case as it went through the litigation process last year in my blog post here. 

I suspect the reason even substantial organisations like McDonald’s overlook the need to use their marks and to maintain evidence of such use, is that responsibility for the brand rests on the shoulders of the marketing department, while knowledge of the intricacies of trademark law resides in the legal department.

So, it’s important to adopt a multidisciplinary approach to brand protection. In my view,  marketers should train in IP and work closely with their lawyers to protect their organisation’s brands and safeguard trademark registrations. 

We provide a way for marketers, business owners and others to better understand how to protect their brands in our training resource which is available as part of our trademark registration services, or may be bought on a stand alone basis.