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Given that an EU trademark proprietor’s rights extend throughout the whole of the EU, are its obligations to prove genuine use of the mark equally far-reaching? Mary Bagnall of Charles Russell Speechlys investigates.
It has long been a feature of EU trademark law that a registered trademark which is unused by the owner or with its consent for a continuous period of five years may be revoked and removed from the register. The reason behind the provisions is to prevent the trademark registers from becoming crowded with marks that are not in use, making those marks available to others.
In addition, registered trademarks which have been unused for a period of five years may not be relied on to oppose the application for the same or a similar trademark by a third party. A proprietor who wishes to rely on a mark which has been registered for more than five years may be asked to prove that the mark has been put to genuine use in the previous five years. If evidence of genuine use is not provided, the opposition will fail.
These principles are incorporated into articles 42(2) and 51 of the amended Regulation (EU) 2015/2424 (EU trademarks regulation), which came into effect on March 23, 2016, and articles 16 and 19 of EU Directive 2015/2436, which harmonises national trademark law for all EU member states and must be implemented (subject to a few exceptions) by January 14, 2019.
Mary Bagnall, Charles Russell Speechlys, EU, trademarks, Jumpman, AP, Daniel Alexander QC, Justice Arnold, CJEU, brand,