Mikołaj Lech

patent attorney

A lawyer, who specializes in industrial property law, combating unfair competition and copyright. Thanks to work in Patent Agency he has a contact with the current problems of entrepreneurs.
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8 Dec

Trademark use is necessary. I will explain why.

I may surprise you, but you should use a registered trademark. If you fail to do so, your protection right may expire. So you will lose not only time (you have to wait several months for the certificate of registration) but also money. Interestingly, you should be happy from the shape of the regulations in relation to trademark use. I can explain why…

 

Are you sure that big can more?

Trademark useImagine a company that makes colossal profits. With it’s arms and legs it wants to stay on top. And it has the resources for it. If there were no rule that the trademark should be used, competitors from the branch would be in big trouble. Our monopolist, for example, could register in the Patent Office the names used by these entrepreneurs.

It could also go in a different direction. It would register a catchy term for all possible goods and services. It would therefore have protection from chemical fertilizers to financial advisory services. And it could do that with all potentially attractive names.

Any of these options would really be to the detriment of normal business transactions. I have already seen many examples of unfair competition. So I guarantee you that companies with aggressive politics would eagerly take advantage of such a legal loophole.

 

Trademark use is necessary within the period of 5 years.

Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark says:

Art. 18

Use of an EU trade mark

If, within a period of five years following registration, the proprietor has not put the EU trade mark to genuine use in the Union in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the EU trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use.

Trademark useAnyone who has a legal interest in this may apply for the revocation of the particular trademark. Everything happens in a litigation procedure before the Patent Office. Interestingly, this is one of the few examples where the applicant does not have to provide evidence to support his claims. In this case, it is the trademark owner who must provide reliable evidence of its use.

And this is often a problem.

Often, it is not the entire trademark that is invalidated, but only a part of it. This happens if the entrepreneur recklessly chooses branches to protect in which he will never enter. For example, he indicated clothing and footwear under class 25.

However, he did not make a single pair of shoes for 5 years.

What does the practice look like?

Official fees, however, effectively stop the fantasy of many companies. A certain amount must be paid for each class of goods indicated.

An entrepreneur who sees how the final sum for protection increases since entering a few numbers on the form, is quickly reducing himself 🙂

During my professional work I also had the opportunity to see real gems. One company has successfully registered a trademark in several classes. I could read there that protection covers for example space shuttles, cash machines and language learning. If someone were malicious, he could try to invalidate each of such goods.

It happens that we don’t have an easy task in our Patent & Trademark Agency. Customers would like to have maximum protection. However, they quickly forget that the trademark use is necessary. So if you are just thinking about registering your name, think carefully about the scope of protection in advance. If you point it too wide, you may encounter problems after a few years.

On the other hand, sometimes an even greater threat is not indicating branches that clearly generate large profits. After filing of your application, you will no longer be able to add anything.

In all this, a “golden mean” must be found. And here the experience of a patent attorney is very useful, whose advice can be very helpful.

I also recommend you to watch the following very important recording:


Fot. 1: Tambako the Jaguar / CC BY-ND
Fot. 2: * Cati Kaoe * / CC BY-NC-SA

Mikołaj Lech

Do you need legal help? Contact with me.
+48 607 416 240
office@lech.bydgoszcz.pl
Mikołaj Lech

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