Trademark registration is not the end of the story! It comes with rights but also responsibilities. If you want to keep your trademark, you have to use it.
TRADEMARK REGISTRATION – AND THEN WHAT?
After registering a trademark, you should:
- regularly monitor the records! The Office will not block the registration of a sign that is identical or similar to your trademark on its own. It is necessary to regularly review the records and file objections. There are 3 months to file an opposition before the Polish Patent Office from the date of the announcement of the application for the disputed trademark in the Office's Bulletin.
- start using the trademark within the specific period of time!
WHY IS IT NECESSARY TO USE A TRADEMARK?
Trademarks will be vulnerable to expiration if they are not used in a timely manner! The offices usually give 5 years for the so-called “start-up”—that is, to start using the trademark from the date of its application or registration. You may also lose your opposition! The lack of actual use of a trademark also entails the sanction of being deprived of the opportunity to effectively invoke your right in opposition proceedings if the applicant for the disputed trademark raises the allegation of non-use.
HOW TO USE A TRADEMARK? How to use a trademark?
The use of a trademark consists, in particular, of:
- placing this trademark on goods covered by the protection right or their packaging, offering and placing these goods on the market, importing or exporting them, and storing them for the purpose of offering and placing them on the market, as well as offering or providing services under this trademark;
- placing the trademark on documents related to the marketing of goods or related to the provision of services;
- using it for advertising purposes.
APPARENT USE
A trademark is genuinely used when it is used in accordance with its primary function, which is to guarantee the origin of the goods and services for which it is registered, so as to create or preserve a market for those goods and services. However, it does not cover cases of use of a symbolic nature, aimed only at maintaining trademark rights.
EVIDENCE OF TRADEMARK USE – GET READY!
Document the use of your trademark for the future and, in doing so, remember that the actual use must be for goods or services in circulation (as well as those to be marketed for which preparations are underway to attract customers, especially through advertising campaigns). The actual use of a trademark cannot be proven on the basis of probability or suspicion but must be demonstrated based on solid and objective evidence of effective and sufficient use of the trademark in the relevant market. Evidence of use may include sales invoices. However, it is also worth collecting other evidence that could confirm the actual use of the mark, such as
- photos of promotional activities carried out,
- print screens of advertising campaigns on websites,
- photos of advertising leaflets (including those that are available online),
- print screens from social media and the website, indicating that certain goods/services are included in the offer.
Note! The evidence should have a visible date.
REBRANDING VS TRADEMARK USE
Have you registered a word and figurative trademark and are planning to rebrand your logo? It may be necessary to register a new trademark, but not always!
Before launching a new logo on the market, make sure that the changes made thereto modify the distinctive character of the trademark. If not, registration of a new trademark may be unnecessary. For example:
No alteration of the distinctive character of the sign as registered (Class 25)
Sign as registered
Sign as used
Source: EUIPO, Common communication on the use of a trade mark in a form differing from the one registered, October 2020.
REBRANDING VS TRADEMARK USE
Remember! The more an element contributes to the distinctive character, the more likely it is that modification of such an element will change the distinctive character of a sign.
Alteration of the distinctive character of the sign as registered (Class 25)
Sign as registered
Sign as used
Source: EUIPO, Common communication on the use of a trade mark in a form differing from the one registered, October 2020.