Proving Genuine Use of Trade Marks in the EU - Key Principles, Evidence & Recent Case Law

Introduction

Maintaining a trade mark registration and successfully enforcing it against third parties can depend on the proprietor's ability to demonstrate genuine use. Once the five-year grace period has expired, genuine use may become a critical issue in revocation, opposition and invalidity proceedings, with potentially significant consequences where use cannot be adequately demonstrated.

Although the legal framework is well established, recent EUIPO and General Court decisions continue to highlight the practical challenges of proving genuine use. Questions frequently arise over what constitutes genuine use, where and to what extent a mark must be used, whether use in a different form is sufficient and the goods and services for which protection can be maintained.

This practical webinar will examine the applicable legal framework and key principles, alongside recent case law illustrating how genuine use is assessed in practice. It will also consider the types of evidence required, common weaknesses in proof of use and the implications for trade mark proprietors and those seeking to challenge registrations.

Attendees will gain practical guidance on evaluating evidence of genuine use, identifying vulnerabilities in trade mark portfolios and avoiding common pitfalls when proving or challenging use in proceedings.

What You Will Learn

The webinar will cover the following:

• The genuine use requirement - what constitutes genuine use, when the requirement applies and the significance of the five-year grace period
• The impact on trade mark proceedings - how genuine use arises in:
• Revocation actions for non-use
• Opposition proceedings, including proof of use requests
• Invalidity proceedings, including proof of use requests
• Trade mark infringement proceedings
• What constitutes genuine use? - The key principles established by the Court of Justice, including the nature, place, time and extent of use, and how these factors are assessed
• Genuine use in practice - recent EUIPO and General Court decisions examining the assessment of evidence, whether genuine use has been established and the extent to which protection can be maintained for particular goods and services