Compulsory use of trademarks

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Do registered trademarks have to be used? Do I now have to send proof of use to the trademark office every year? And what does “use that preserves rights” actually mean?

First of all to reassure you, no, you do not have to send proof of use to the trademark offices every year. They will certainly be more than surprised by such mailings.

Proof of use only has to be submitted if this has been requested, for example in the course of opposition or cancellation proceedings.

In general, registered trademarks must be used. However, a grace period of 5 years applies. Within this period, the trademark owner can start using the trademark. The grace period therefore allows the trademark owner to gradually start using the trademark so that he is not immediately forced to provide evidence of use for all goods and services. After 5 years, however, it should be possible to provide proof of use if there is a serious intention to use the trademark.

Proof of use therefore serves to restrict the use of so-called “shelf marks”. These trademarks are registered but not used, however can still serve as a basis for opposition or infringement proceedings.

After the grace period for use has expired, evidence of use should therefore be collected, for example in the event of opposition proceedings. In opposition proceedings, only those goods and services for which use can be proven are taken into account for the opposition.

If the trademark is not used, it is deemed ready for cancellation. Cancellation requests against the trademark can then lead to cancellation if there is no proof of use.

So-called intermediate rights, i.e. third-party trademarks that were registered during a period of non-use, are also problematic. It is then not possible to assert the earlier trademark rights against these third-party trademarks, as the trademark was ready for cancellation due to non-use at the time the third-party trademark was registered. This circumstance cannot be cured by a later resumption of use. The resumption of use after receipt of a cancellation request also does not lead to use that preserves the rights.

In this respect, care should be taken to ensure that registered trademarks are also used for at least some of the goods and services. Otherwise, there is a risk of loss of rights through cancellation or the creation of intermediate rights.

At this point, I would also like to refer you to the articles on rebranding and the use of trademarks with retained rights.


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