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How to prove the use of a Trade Mark? Valuable Guidance from the Supreme Court Judgment

With the registration of a trade mark, its owner acquires not only exclusive rights against third parties but also the obligation to commence the use of the trade mark no later than within 5 years.

At the same time, any interested person has the right to challenge the registration of a trade mark if, after the expiration of the said term, the trade mark is not actually used in commercial activity. In such a dispute, the trade mark owner will have to provide evidence proving the use of the trade mark with respect to the goods and services for which the trade mark is registered.

On 13 May this year, the Supreme Court, in case C30575718, provided clear guidelines on the requirements for proving the use of a trade mark. Although these findings can be found in the judgments of the Court of Justice of the European Union and in certain earlier judgments of Latvian courts, the mentioned Senate judgment consolidates them in one place and explains in detail.

  • The trade mark owner (defendant) has the obligation to prove the use of the trade mark by submitting specific evidence. The claimant does not have to prove that the trade mark has not been used.

  • Evidence must be submitted for each good/service indicated in the trade mark registration, even if the goods/services fall under the same Nice Classification class. Evidence of the use of the mark in relation to one service cannot be applied to all services indicated in the relevant class.

  • However, if the goods/services are defined very precisely and narrowly and fall within one homogeneous category, it may be sufficient to submit evidence only regarding part of the goods/services included in this category.

  • In principle, the court must assess all submitted evidence regarding the use of the trade mark; however, there may be situations where only a few or even a single piece of evidence is sufficient for proving use.

  • Use cannot be proven by probabilities or presumptions, but only by objective evidence of effective and sufficient use of the trade mark in the relevant market.

  • A trade mark may also be used in a form that differs in non-essential elements from the registered trade mark. When evaluating the differences, it is not necessary to assess whether the registered and used signs are confusingly similar, but rather to establish whether the differences are non-essential and such use does not alter the distinctive character of the registered trade mark.

    • Accordingly, trade mark owners should remember that the registration of a trade mark does not allow them to “reserve” rights to the respective sign concerning all goods/services covered by the registration throughout its validity period, if the trade mark is not actually used or is used only for certain items from the list of goods/services.

    It should also be remembered that when changing the form of a trade mark over time, it is necessary to assess whether it is required to register a new trade mark.

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