Proper Use of a Trademark

13. 3. 2024 | JUDr. Vladislava Růžičková

Trademark registration is neither final nor infinite; the key is its active use. Discover why it is essential to actively use your brand in the marketplace to maintain legal protection and what evidence is needed to demonstrate this usage.

Many believe that once a trademark is registered, their rights are completely secured and they need not worry about their trademark until it is time for renewal. This article explains why such an approach is not advisable, what constitutes proper use of a trademark, and why it is crucial to understand and remember this concept to maintain your rights.

Given that a registered trademark provides owners with a strong position in the market, where no other entity can offer products or services under the same or confusingly similar designation in the same market segment, it is understandable that legislation imposes certain obligations on owners. One of the most significant obligations is the so-called proper use of a trademark. This duty is regulated by law to prevent the blocking of the use of registered but unused designations by other entities.

Non-use of a registered designation – a trademark can lead to loss of rights if another party files a petition to cancel the trademark due to non-use. If a trademark is not used, its owner cannot effectively defend their trademark rights.

What does proper use of a trademark entail?

Proper use of a trademark is its public use, where it fulfills its distinguishing function and serves to identify the origin of the products and/or services for which it is registered. It involves activities where the owner attempts to create or maintain market shares for the relevant products and services, but does not include internal use (e.g., solely within the trademark owner’s company).

You might be surprised by how many companies, even successful ones operating not only in the Czech market but also internationally, struggle to produce sufficient evidence to demonstrate proper use of the mark. A well-known case is that of McDonald’s, which failed to provide enough evidence of using its Big Mac trademark, leading to its cancellation at the first instance. Although the company eventually managed to defend its rights, the damage was evident and the market did not hesitate to exploit the situation. In the context of this case, it is pertinent to realize that the authority only considers documents formally presented to it and cannot take into account any additional information that might be available to customers or competitors in the market.

However, there is no need to despair if you have had periods when your products or services did not sell, or if the preparation to launch your new products was unexpectedly delayed. In assessing whether a mark is properly used, market specifics are considered, and not every case requires that the use be quantitatively significant. A trademark does not need to be used continuously.

What matters is whether the use was made with the aim of maintaining or creating market share for the products and services protected by the trademark. Established jurisprudence also holds that a trademark does not need to be commercially successful to be regarded as used.

Although proof of proper use cannot be demanded from the trademark owner during the first five years after registration, it is advisable not to neglect gathering materials demonstrating use of the mark during this period. This is because your competition can file for cancellation on the first day after the five-year period expires.

What type of documents can serve as proof of use? 

Suitable evidence includes product and service catalogs, brochures, advertising campaigns, invoices, goods or services offers, online presentations, social media posts, and data on costs incurred in promoting the mark.

The trademark must be used by the owner or by a third party authorized to use the mark (e.g., a license holder).
It is important that the documents are dated; they must clearly show that the trademark was used during the relevant period.
Since trademarks are valid only in the territory where they are registered, use of the trademark is proven for the relevant territory. For Czech national trademarks, the relevant territory will be the Czech Republic. For European Union trademarks, it is sufficient to demonstrate use in just some member states; use throughout the entire EU is not required.

The law also considers cases where minor modifications to the registered trademark occur over several years. If the trademark is used in a form that differs from the registered form, it constitutes proper use provided that the changes do not affect its distinctiveness.
Archiving relevant documents can be a complex process and, if neglected, the trademark can easily become vulnerable. It is therefore advisable to be aware of when the five-year period since your trademark's registration expires.

When objections are raised against later trademark applications, or when actively asserting your rights, you face the risk that the other party will demand proof of proper use of the trademarks on which the objections are based (if the five-year period since their registration has passed). The other party also has the option to defend against proposals to cancel your trademark in the aforementioned manner.

When a proposal to prove use or to cancel a trademark is submitted, owners of older rights often do not have enough time to retrospectively collect, sort, and prepare and describe documents in the form required by authorities. It is therefore appropriate to consider archiving evidence of trademark use continuously, as this process can be financially demanding and not every owner is prepared and able to invest in it under time pressure.

There are many ways to effectively prevent situations where you risk losing your rights to trademarks. Our office is ready to discuss with you how to proceed in your specific case, and we are also happy to help you set up your internal processes for managing evidence of proper use of your trademarks.

On behalf of THK Legal Ltd.

JUDr. Vladislava Růžičková
Attorney at LawThe author serves as the lead attorney at a law and patent office, specializing in intellectual property protection and dispute resolution.