The European Union legislation on trade marks establishes an obligation for the owner of a registered trade mark to use that mark in a genuine manner in the market in order to keep its rights valid and in force. The owner must put the EUTM into genuine use within a period of 5 years following its registration (Article 18(1) EUTMR). Accordingly, the owner has a ‘grace period’ of 5 years after registration, during which it cannot be required to demonstrate use of the mark; once this period lapses, the owner may be required to prove genuine use of the earlier mark. However, there is no automatic request from the IP office to show such use when the grace period lapses. Proof of use can be requested by a third party when the EUTMs has been used as basis of an opposition , or in the context of cancellation proceedings and/or other legal conflict with third parties, for example, where a revocation action is filed against the EUTM by an interested party.

In recent cancellation decisions of the EUIPO (  it was pointed out that in order to examine the genuine use of a mark, an overall assessment of the submitted documents must be made taking account of all the relevant factors: for instance, a low volume of goods marketed under that trade mark may be compensated for by high intensity of use or a certain constancy regarding the time of use of that trade mark or vice versa. In other words,  even if the probative value of an item of evidence is limited to the extent that, individually, it does not show with certainty whether, and how, the goods concerned were placed on the market, and that item of evidence is therefore not in itself decisive, it may nevertheless be taken into account in the overall assessment as to whether the use of the mark concerned is genuine.

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Kinga Loretta Simone/Riccardo Ciullo

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