A trademark must be used in the course of trade. What consequences await the holder of a trademark that is not used in the course of trade? First of all, the mark will be at risk of invocation if it is not used within five years counting from the date of its registration. The rightsholder may also face negative consequences in the event of claims or attempts to invalidate third-party trademarks.
Will any use of a trademark be sufficient? No. The use must be actual and genuine. Genuine use is when a trademark is used in accordance with its essential function, which is to guarantee the origin of the goods and services for which it is registered. This does not cover cases of use of a token nature, serving solely to preserve the trademark rights.
However, genuine use will not always look the same.
Examples of situations where the use was found to be insufficient
A German bakery located in a city of 18,000 inhabitants, proved constant monthly sales of approximately 3.6 kg of exclusive, handmade chocolates over a period of 22 months. Despite being advertised on a web page accessible throughout the world, the chocolates could only be ordered and bought in the opponent’s bakery. In view of the territorial and quantitative limits, the GC considered that use had not been sufficiently proven. (Reber Holding GmbH & Co. KG v Office for Harmonisation in the Internal Market, T-355/09)
Eleven invoices showing that 13 units of ‘perfumery’ goods were sold in Spain between 2003 and 2005, for a total amount of EUR 84.63, were deemed as insufficient proof of genuine use of the trademark. Account has been taken of the fact that the goods were intended for daily use and available at a very affordable price. (Decision 06/04/2011, R 0999/2010-1 – ‘TAUTROPFEN CHARISMA (fig.)’)
Examples of sufficient use
Nine invoices dated between April 2001 and March 2002 representing sales of around EUR 1,600 (with a turnover figure barely above EUR 1,000,000 per year) and showing that items were delivered to different customers in small quantities (12, 24, 36, 48, 60, 72 or 144 pieces), for widely-used products like shoe polish, in the largest European market, Germany, with approximately 80 million potential consumers. Those invoices presented evidence of use that is objectively capable of creating or maintaining a market for polishing cream and leather conditioner. Furthermore, the volume of sales, in relation to the period and frequency of use, was deemed to be significant enough not to be concluded as merely token, minimal or notional for the sole purpose of preserving the rights conferred by the mark. Confirmed by the GC. (Judgment of 16/11/2011, T-308/06, ‘’BUFFALO MILE Automotive Polishing Products’’, para. 68)
The Board of Appeal found that the documents presented to it during the administrative proceedings—invoices proving the sale of beer in France amounting to more than 40,000 litres between October 1997 and April 1999, 23 invoices issued in Austria between 1993 and 2000 to a single buyer in Austria and 14 invoices issued in Germany between 1993 and 1997—were sufficient to demonstrate the extent of use of the earlier international word mark BUDWEISER (IR No 238 203) in those countries. (Judgment of 25/03/2009, T-191/07, ‘BUDWEISER’).
The mere presence of a trademark on a website is, of itself, not sufficient to prove genuine use unless the website also shows the place, time, and extent of use or unless this information is otherwise provided (e.g. with other evidence: invoices, proof of order). The evidence submitted must show that the online transactions were connected with the goods or services designated by the mark.