CITMA Paralegal Seminar Proof of Use – UK and EUTM

2. CITMA Paralegal SeminarProof of Use – UK and EUTM

3. Summary / Intro A review of the concept, practice and intricacies of Proof of Use at the UK and EUIPO. Attendees will learn about the relevant use provisions, dates, situations when proof may be required, what is required in practice at each office and the issue of “use in the Community”. • Refresh your memory • Ideas for adding value - evidence gathering/compilation/submitting

4. Legal Framework Summary • Legislative framework • Defined in the UK Trade Marks Act and the EUTM Regulation • UK Trade Marks Act 1994 (as amended recently The Trade Marks Regulations 2018 SI 2018/825 coming into force 14 Jan 2019) • section 6A [proof of use in opposition] • section 46 [revocation]. • Section 47 [proof of use in invalidity] • EUTMR 2017/1001 • Articles 18 [use requirement and definition of acceptable variation] • Article 47(2) [proof of use in opposition] • Article 58(1)(a) [revocation] • Article 64 [proof of use in invalidity]

5. Legal Framework- Opposition S.6A Raising of relative grounds in opposition proceedings in case of non-use • (1) This section applies where • (a) an application for registration of a trade mark has been published, • (b) there is an earlier trade mark of a kind falling within section 6(1)(a), (b) or (ba) in relation to which the conditions set out in section 5(1), (2) or (3) obtain, and • (c) the registration procedure for the earlier trade mark was completed before the start of the relevant period . • (1A) In this section “the relevant period” means the period of 5 years ending with the date of the application for registration mentioned in subsection (1)(a) or (where applicable) the date of the priority claimed for that application. • (2) In opposition proceedings, the registrar shall not refuse to register the trade mark by reason of the earlier trade mark unless the use conditions are met. • (3) The use conditions are met if – • (a) within the relevant period the earlier trade mark has been put to genuine use in the United Kingdom by the proprietor or with his consent in relation to the goods or services for which it is registered, or • (b) the earlier trade mark has not been so used, but there are proper reasons for non- use. • (4) For these purposes – • (a) use of a trade mark includes use in a form (the “variant form”) differing in elements which do not alter the distinctive character of the mark in the form in which it was registered (regardless of whether or not the trade mark in the variant form is also registered in the name of the proprietor), and … Article 47(2) [proof of use in opposition] Article 47 – examination of an opposition • … • If the applicant so requests, the proprietor of an earlier EU trade mark who has given notice of opposition shall furnish proof that, during the five-year period preceding the date of filing or the date of priority of the EU trade mark application, the earlier EU trade mark has been put to genuine use in the Union in connection with the goods or services in respect of which it is registered and which he cites as justification for his opposition, or that there are proper reasons for non-use, provided that the earlier EU trade mark has at that date been registered for not less than five years. In the absence of proof to this effect, the opposition shall be rejected. If the earlier EU trade mark has been used in relation only to part of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services. • Paragraph 2 shall apply to earlier national trade marks referred to in Article 8(2)(a), by substituting use in the Member State in which the earlier national trade mark is protected for use in the Union. • … • If the examination of the opposition reveals that the trade mark may not be registered in respect of some or all of the goods or services for which the EU trade mark application has been made, the application shall be refused in respect of those goods or services. Otherwise the opposition shall be rejected…

6. Legal Framework – Revocation S.46. – • (1) The registration of a trade mark may be revoked on any of the following grounds- • (a) that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use; • (b) that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use; • (2) For the purpose of subsection (1) use of a trade mark includes use in a form (the “variant form”) differing in elements which do not alter the distinctive character of the mark in the form in which it was registered (regardless of whether or not the trade mark in the variant form is also registered in the name of the proprietor), and use in the United Kingdom includes affixing the trade mark to goods or to the packaging of goods in the United Kingdom solely for export purposes. • (3) The registration of a trade mark shall not be revoked on the ground mentioned in subsection (1)(a) or (b) if such use as in referred to in that paragraph is commenced or resumed after the expiry of the five year period and before the application for revocation is made: • Provided that, any such commencement or resumption of use after the expiry of the five year period but within the period of three months before the making of the application shall be disregarded unless preparations for the commencement or resumption began before the proprietor became aware that the application might be made. • (5) Where grounds for revocation exist in respect of only some of the goods or services for which the trade mark is registered, revocation shall relate to those goods or services only. • (6) Where the registration of a trade mark is revoked to any extent, the rights of the proprietor shall be deemed to have ceased to that extent as from- • (a) the date of the application for revocation, or • (b) if the registrar or court is satisfied that the grounds for revocation existing at an earlier date, that date. Article 58(1)(a) [revocation] Article 58 Grounds for revocation • The rights of the proprietor of the EU trade mark shall be declared to be revoked on application to the Office or on the basis of a counterclaim in infringement proceedings: • if, within a continuous period of five years, the trade mark has not been put to genuine use in the Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use; however, no person may claim that the proprietor’s rights in an EU trade mark should be revoked where, during the interval between expiry of the five-year period and filing of the application or counterclaim, genuine use of the trade mark has been started or resumed; the commencement or resumption of use within a period of three months preceding the filing of the application or counterclaim which began at the earliest on expiry of the continuous period of five years of non-use shall, however, be disregarded where preparations for the commencement or resumption occur only after the proprietor becomes aware that the application or counterclaim may be filed; 2. Where the grounds for revocation of rights exist in respect of only some of the goods or services for which the EU trade mark is registered, the rights of the proprietor shall be declared to be revoked in respect of those goods or services only.  

7. Legal Framework – Invalidation S 47 – • (1) … • (2) Subject to subsections (2A) and (2G), the registration of a trade mark may be declared invalid on the ground- • (a) that there is an earlier trade mark in relation to which the conditions set out in section 5(1), (2) or (3) obtain, or • unless the proprietor of that earlier trade mark or other earlier right has consented to the registration. • (2ZA) … • (2A)  The registration of a trade mark may not be declared invalid on the ground that there is an earlier trade mark unless – • (a) the registration procedure for the earlier trade mark was completed within the period of five years ending with the date of the application for the declaration, • (b) the registration procedure for the earlier trade mark was not completed before that date, or • (c) the use conditions are met. • (2B) The use conditions are met if – • (a) the earlier trade mark has been put to genuine use in the United Kingdom by the proprietor or with their consent in relation to the goods or services for which it is registered- • (i) within the period of 5 years ending with the date of application for the declaration, and • (ii) within the period of 5 years ending with the date of filing of the application for registration of the later trade mark or (where applicable) the date of the priority claimed in respect of that application where, at that date, the five year period within which the earlier trade mark should have been put to genuine use as provided in section 46(1)(a) has expired, or • (b) it has not been so used, but there are proper reasons for non-use. • (2C) For these purposes – • (a) use of a trade mark includes use in a form (the “variant form”) differing in elements which do not alter the distinctive character of the mark in the form in which it was registered (regardless of whether or not the trade mark in the variant form is also registered in the name of the proprietor), and Article 64 • … • If the proprietor of the EU trade mark so requests, the proprietor of an earlier EU trade mark, being a party to the invalidity proceedings, shall furnish proof that, during the period of five years preceding the date of the application for a declaration of invalidity, the earlier EU trade mark has been put to genuine use in the Union in connection with the goods or services in respect of which it is registered and which the proprietor of that earlier trade mark cites as justification for his application, or that there are proper reasons for non-use, provided that the earlier EU trade mark has at that date been registered for not less than five years. If, at the date on which the EU trade mark application was filed or at the priority date of the EU trade mark application, the earlier EU trade mark had been registered for not less than five years, the proprietor of the earlier EU trade mark shall furnish proof that, in addition, the conditions set out in Article 47(2) were satisfied at that date. In the absence of proof to this effect, the application for a declaration of invalidity shall be rejected. If the earlier EU trade mark has only been used in relation to part of the goods or services for which it is registered, it shall, for the purpose of the examination of the application for a declaration of invalidity, be deemed to be registered in respect of that part of the goods or services only. • Paragraph 2 shall apply to earlier national trade marks referred to in Article 8(2)(a), by substituting use in the Member State in which the earlier national trade mark is protected for use in the Union. • … • If the examination of the application for revocation of rights or for a declaration of invalidity reveals that the trade mark should not have been registered in respect of some or all of the goods or services for which it is registered, the rights of the proprietor of the EU trade mark shall be revoked or it shall be declared invalid in respect of those goods or services. Otherwise the application for revocation of rights or for a declaration of invalidity shall be rejected.

8. Legal Framework – EU Requirement and Definition • Article 18 [use requirement and definition of acceptable variation] Article 18 - Use of an EU trade mark 1. 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. The following shall also constitute use within the meaning of the first subparagraph: • use of the EU trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor; • … 2. Use of the EU trade mark with the consent of the proprietor shall be deemed to constitute use by the proprietor. • No separate UK equivalent

9. Concept of Genuine Use • Control mechanism - avoid clogging up the register. (cf USA / Canada)(UK/EU can sue without use) • Genuine use is not defined by legislation / regulation. • Overriding principles from case-law (the two key cases are Minimax C-40/1 and La Mer C-259/02) • Genuine use means actual use • Genuine use is not merely token use (Pop-up shops might be purely token) • Genuine use must be consistent with the essential function of a trade mark • Use on the market and not just internal use • maintain or create a market share for the goods or services protected • Consideration is given to the nature of g/s, characteristics of the market and scale and frequency of use (luxury yachts vs. toothpaste) • Use does not necessarily have to be quantitatively significant • Use of the mark in forms different from the one registered • Reasons for Non-Use • Compare and contrast with evidence of reputation or acquired distinctiveness

10. Use in the Community (or the Union as it is now) • Unitary nature of an EUTM vs. territorial/commercial borders • Leno Merken C-149/11 – ‘The territorial scope of use is only one of several factors’ • Territorial borders should be disregarded (unitary character). • Seek to define the use in the context of the market / business sector of the goods and services. • One country can be enough (indeed one part of one country can be enough) • Depends on characteristics of market, nature of goods, territorial extent and scale of use and frequency and regularity • Hard concept to describe compared to proving use for UKTM, but if really using somewhere in EU should be ok (assuming your evidence is good – see below) • So can support an opposition in UK based on EUTM with evidence of use in just France for example • Can support an opposition at EUIPO based on EUTM with evidence of use in just UK (or Ireland) for example

11. Date calculation Opposition • UK or EU opposition • Application filed (or designated if IR) - 12/08/18 • published - 12/10/18 • Basis of opposition – UK/EUTM/National or IR(UK/EM/Nat) designation • If earlier rights registered or granted on or before 12/08/2013 • Use period - 12/08/13 – 11/08/18 • Note – UK currently uses publication date as relevant date but will change in line with EU ON 14 January

12. Date calculation Invalidity • UK or EU opposition • Registration filed (or designated if IR) - 12/06/18 • Granted - 12/10/18 • Basis of invalidity – UK/EUTM/National or IR(UK/EM/Nat) designation • Application for Invalidity filed – 12/10/18 • If earlier rights registered or granted on or before 12/10/2013 • Use period - 12/10/13 – 11/10/18 • Plus, if they are old enough, also in the period five years up to the filing date of the registration we are trying to invalidate additional use period - 12/06/2013 – 11/06/2018 • Note – UK currently only requires use in five years preceding application for invalidity but will change in line with EU to include second potential period, on 14 January

13. Date calculation Revocation • UK or EU registration • Registration granted - 11/10/2013 • Earliest date for revocation - 12/10/2018 • Revocation action filed – 12/10/2018 • Use period – 12/10/2013 - 11/10/2018 • Earlier periods can be specified if UK or IR(UK) designation has been registered for more than five years when revocation action filed. • Note – a revocation action filed at the EUIPO only applies in respect of the five years preceding the revocation action

14. Nature of the Evidence • Evidence of Use • Do not rely on probabilities or suppositions • Evidence should always be comprehensive • Evidence must prove serious attempt to acquire or maintain market share • Not token use • Evidence relevant to specific nature of goods and services i.e. how is a trade mark typically applied to software/ice cream/ motor cars / merchandise • In general terms, evidence must demonstrate: • The scale and frequency of the use shown • The nature of the use shown • The goods and services for which use has been shown • The nature of those goods/services and the market(s) for them • The geographical extent of the use shown • Independence / probity of material - third party evidence given more weight • Quality v quantity • Overall assessment / impression of evidence • UKIPO summary • The tm has been used in relation to the g/s in the registrations • Volume of sales of those g/s under the mark in the period • Examples of mark in use eg copies of sales invoices or sales records or advertisements/brochures. • Period of time during which the mark has been used and the geographical area the use covered • How the mark is used in relation to the g/s eg on labels, signs, invoices, advertising materials. • EU summary – • Article 10(3) EUTMDR, the indications and evidence required in order to submit proof of use must consist of indications concerning the place, time, extent, and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based and evidence in support of these indications • Article 10(4) EUTMDR, the evidence must consists of written documents and in principle be confined to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing

15. Evidence Formalities - UKIPO • Has proof of use been requested? Proof only required in opposition or invalidity proceedings if Applicant/Registered Proprietor makes a formal request. It is only not required if the Applicant/Registered Proprietor in their TM8 does not accept the opponent’s/Applicant’s statement of use on their TM7/26(I) – recommended for applicant to always not accept and to require this proof. • Deadlines • Opposition – evidence of use if required is due downstream with opponent’s evidence in chief – two months from notification of the TM8. • Nb in Fast Track opposition evidence if required is due upfront along with the TM7F. • Invalidity - evidence of use if required is due downstream with invalidity applicant’s evidence in chief – two months from notification of the TM8. • Revocation – evidence of use is due either with the TM8(N) (which is due 2 months after the TM26N is served) or within 2 months of TM8(N) if an extension is requested. • Extensions or suspensions – if needed be aware of rules and distinction. • Relevant time period(s)/Relevant goods and services • Format (IPO Manual) – clear and structured manner • Usually by witness statement (or affidavit or stat dec) – know the format of this – must include a statement of truth. • Exhibits • usually referred to by initials and number eg JS1, JS2 etc. • cover sheet identifying the exhibit eg “Exhibit JS1 made by Julius Stobbs this 12th day of October 2018” [check matches date witness statement was signed. • Photos of bulky exhibits preferable but if bulky then must attach an identifier. • Page numbering – exhibits of more than 4 pages must be paginated. Can paginate the whole submission. Bottom right. Needs to be clear, or can be returned. • Electronic media – consider copy for other side and compatibility / accessibility. • Statement in foreign languages – can be challenged and translation required • Note use of evidence filed in earlier proceedings or at earlier examination stage. • Expert witness evidence – permission • Survey evidence - permission • Redacting – confidential information/Confidentiality – specific request • Potential for other side to challenge our evidence resulting in a cross examination in person • Copy for IPO and for other side nb especially if bulky or colour and electronic media. • Page limit on evidence in chief – IPO may challenge if more than 300 pages. In Fast track the page limit on use evidence exhibits is 100 pages.

16. Evidence Formalities – EUIPO – Any Differences? • Has proof been requested? • Proof only required in opposition or invalidity proceedings if Applicant/Registered Proprietor makes a formal request. This must be done in a clear separate communication from any other response. EUIPO will then set deadline for proof of use outside of predetermined evidence rounds • Revocation – deadline evidence of use is due either two months from application being served • Extensions or suspensions – procedural not discretionary • EUTMR and EUTMDR Articles define what evidence can be and how it can be presented • What • In accordance with Article 10(3) EUTMDR, the indications and evidence required in order to submit proof of use must consist of indications concerning the place, time, extent, and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based and evidence in support of these indications • Article 10(4) EUTMDR, the evidence must consists of written documents and in principle be confined to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing. • How • Evidence must be filed in accordance with Article 55 EUTMDR • Annexes to a submission and must be numbered consecutively • Must contain an index of exhibits • No potential for other side to challenge our evidence resulting in a cross examination in person • Language of opposition – if not in required language when filed this can be required to translated – new deadline set • Copy for other side only needed if colour, bulky, electronic media etc. • Confidentiality – simply mark • Limitations / restrictions • Recommends do not exceed 110 pages in submission. • Nb requirements of e-communication • End result – fax or post or e-communication

17. What do you ask the client for? • Timing – always be ahead; give clients as much time as possible, lengthy process, low priority for the business; set clear deadlines; this can often take longer at all stages than anticipated. • Guide them – recommendation for what is required • Key - Dates / territory / mark / goods/services • Questionnaire • Information • - witness information • - dates • - versions of marks • - breakdown of goods and services • Types of evidence • - turnover – provide a table (broken down by years and countries) • - units sold/customer numbers – provide a table (broken down by years and countries) • - packaging/images of products • - advertising campaigns/promotions • - social media • - invoices • - online activity – hits/historical content/dates/language/currency • Clarify who is doing what (eg. financial data/publicly available publications) • Costs / budgets • Note pros and cons of previous material /submissions

18. How can you help? • Coordinating whole process? • - liaising with client • First review of evidence • Just compiling material given to you? • Doing some of the evidence gathering yourself? • Website / wayback machine / Company reports / Industry bodies/circulation figures • Reviewing material provided? • Dates / mark / territory / use by us or under licence / are statements supported • The final submission? • - formatting • - exhibits • - numbering pages/number of pages • - arranging signature • - copying/uploading/faxing/courier

19. Common errors / tricks in proof of use • Late – timing is key • There is a deadline for this. It will take time to get from client and then to prepare for submission. Give client as much time / warning as you can. • Substance – get key requirements right • Wrong date range • Wrong countries • Wrong language • Wrong mark (company name)! • Substance – details matter • Detail will be scrutinised – do we have dates on our material, do we suitably support statements, do we address the relevant goods / services • Reusing old / out of date material – can help costs / time but needs to be suitably up to date and relevant to specific – don’t assume one size fits all • Not to be feared but not to be taken lightly, very well known brands can fail to prove use

20. Conclusion

21. Questions?