We discussed the important issue of the obligation to use trademarks. We would like to continue this topic by discussing the important parameters of this use.
Place of use of the trademark
A trademark should be used within the territory where it has acquired protection rights. It is worth reminding that regarding trademarks, the principle of territoriality applies, and the holder is entitled exclusively to those territories where appropriate registration has been obtained.
Place of use of the trademark in the context of proving use
If, at any point, you are required to demonstrate the use of your trademark, the evidence must indicate the territory in which such use occurred. Taking invoices as an example, crucial significance will be attributed to the details of the recipient of your goods or services - the address/place of business will indicate in which country your goods or services are present.
National mark
If the mark is a national mark, there is a requirement that such a sign is genuinely used in the country in which it is protected. Use in a part of a country's territory, as long as it is genuine, may be considered sufficient.
What about European Union marks?
It's worth noting that European Union trademarks have a unified nature and grant protection across all member states of the EU. Does this mean that the holder of such a trademark must use it in all EU countries? The answer to this question is no. Imposing such an obligation would seem overly burdensome. It is generally accepted that assessments of genuine trademark use in the European Union should be made without regard to the borders of member states' territories.
Duration of Trademark Use
The owner of a trademark may use it for the entire duration of its legal protection. However, they are obliged to commence its use if the trademark has been registered for at least five years. While trademark use does not need to be continuous, it is important to maintain a sufficient level of use over the past five years, although it does not necessarily have to be the entire five-year period.
Duration of Trademark Use in the Context of Demonstrating Use
When the obligation arises to substantiate the use of a trademark with evidence, the period for which such use must be demonstrated is taken into account. It is appropriately calculated depending on the circumstances of the case and the procedure from which such obligation arises. For example, in proceedings concerning revocation, the owner of the trademark must provide evidence of actual use of the mark within the five years preceding the date of the application for revocation. Therefore, it is crucial that the evidence of use includes a date. Evidence of use beyond the required timeframe is generally irrelevant.