The registration of a trademark is associated with an important obligation involving its use. Simply referring to high brand recognition or extensive operations may prove insufficient in evidence proceedings before intellectual property authorities. The use of the trademark must be real (it cannot be apparent or symbolic), it must take place in the territory where the trademark is registered, and refer precisely to the goods or services for which it is registered. Otherwise, the entrepreneur may lose protection.
The owner of the word and figurative mark “MTV MUSIC TELEVISION” No. 180 760 registered in the EU for a number of goods and services in Classes 9, 16, 25, 28, 38, 41 and 42, has experienced this, as in recent proceedings it was not proven that the trademark was used in relation to most of them.. Why? In the course of the evidence proceedings, it focused mainly on presenting evidence concerning the use of the mark in television programmes. However, it did not provide adequate evidence for the other goods and services covered by the registration. What does the adequate evidence mean? It includes, for example, sales invoices, documents, photographs, advertising newsletters, printouts from websites that bear the date and show the goods concerned with the mark applied to them or refer to the goods and the mark.
In the case of goods in Class 9 (such as e.g. headphones, phone cases), the owner did not provide date-stamped documents indicating when the trademark was used. It also failed to prove that the mark was used in relation to gramophone records, as it did not present vinyl records, but CDs and DVDs. Although we may argue that these are similar goods, the evidence presented must relate precisely to the specific goods for which the trademark was registered, and not merely to goods similar to them. The owner also indicated the production of a significant number of feature films, but the documents submitted only confirmed that the films were distributed by Paramount Pictures. They did not contain any reference to the trademark in the context of film production.
This example demonstrates the importance of careful documentation of the trademark use - first and foremost by gathering evidence directly linking the trademark to the specific goods or services for which it was registered. Otherwise, the entrepreneur may be accused of apparent use of the trademark and, as a consequence, the trademark may be canceled.
If you would like to learn more about trademark use obligations or need support in assessing the risk of non-use, our Intellectual Property team is here to help. Feel free to contact us or explore our areas of expertise.