The request for proof of use in opposition proceedings is considered as one of the main defense pleas of the applicant.
Formalities
It must be filed within the first time for the applicant to reply to the opposition, although the EUIPO accepts requests submitted during the cooling off period or during the two-month period given to the opponent to substantiate the opposition.
The request is only admissible if it is unconditional, explicit, and unambiguous, and if it is submitted in a separate document.
Trademarks subject to the request
For oppositions filed against EUTM applications, the opponent may be required to prove genuine use if, on the date of filing or on the date of priority of the EUTM application, the earlier mark has been registered for not less than 5 years.
In case of oppositions against IR designating the EU, the opponent may be required to prove genuine use if, on the date of registration of the IR or on the date of its priority or, on the date of subsequent designation of the EU, the earlier mark has been registered for not less than 5 years.
Deadline
If the request is admissible, the Office gives the opponent two months to submit proof of use or show that there are proper reasons for non-use. An extension of the deadline is admissible if properly filed.
Language
Where the evidence submitted is not in the language of the opposition proceeding, the Office may request the opponent to submit a translation of the evidence. It is left to the discretion of the Office, that balances the interest of both parties.
Requirements
The evidence must show genuine use, that is, actual use of the mark and not a merely token use. Genuine use of a trademark cannot be proved by means of probabilities or suppositions but must be demonstrated by solid and objective evidence of effective and sufficient use.
The indications and evidence required in order to provide proof of use must concern the place, time, extent and nature of use of the opponent’s trademark for the relevant goods and services. These requirements for proof of use are cumulative.
Means of evidence
The evidence of use shall consist of invoices, catalogues, price lists, packages, labels, photographs, newspaper advertisements, written statements, advertising expenses. Market surveys and quotations of the mark in lists and publications of associations of the relevant profession are also suitable means of evidence.
According to our experience, invoices are considered one of the most important evidence of use, reason why the non-filing of this kind of document might result in the consideration of our evidence as non-sufficient.
Consequences of lack of use
In the absence of proof of use the opposition shall be rejected. If the earlier EU trademark has been used in relation to only part of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services. Notwithstanding, if the opposition is based on other Trademarks that are not subject to the use requirement, the Decision of the proceeding will be based on them.
General Considerations
In practice, we have found that the compilation and submission of use documents is quite laborious for many IP right holders since it also involves the consultation of different departments like sales and marketing.
In order to save costs and effort, we always point out that “less is often more” and that the most important thing is to selectively submit the documents that meet the stated requirements.
Extensive product details, internal cost lists or catalogs without dates or merely general company declarations are therefore less valuable than valid invoices (where confidential information can of course also be blacked out) and dated sales documents.
A selective choice of documents can also reduce costs, as it leads to less translation work and attorney work during processing.
Author:
Eva Martín
Head of the European Union Trademarks Area.
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