A trademark application can proceed smoothly through the office’s examination to registration without the need for further actions. However, sometimes the application process may already involve various steps, such as office actions or opposition proceedings. Even if the mark is successfully registered, the registration certificate alone does not automatically create a strong right to the trademark – maintaining trademark rights and increasing brand value requires continuous care and long-term effort.
Exclusive right to a trademark can last indefinitely if the mark is properly maintained. To remain valid, a trademark must be renewed every ten years. It is also important to keep registration details up to date, such as changes to the owner’s name or address, ownership transfers, and recording possible licenses. For example, if a license is not recorded in the trademark register, it is not binding towards a third party acting in good faith or the creditors of the trademark proprietor. If a license is not recorded and the trademark is assigned to a third party, the license would not be effective towards the assignee if the assignee acted in good faith, i.e., was unaware of the license.
The trademark owner is responsible for taking action against later identical or similar trademark applications. For example, the European Union Intellectual Property Office (EUIPO) does not ex officio reject new trademark applications based on likelihood of confusion with earlier rights. It is the responsibility of the earlier rights holder to be vigilant and, if necessary, file an opposition against a later application.
It is important to intervene in potentially infringing trademark applications and infringing use of a trademark on the market, as this enables maintaining the distinctiveness of one’s own trademarks and makes it possible to take action in possible infringement situations also in the future. The further you can keep the competitors, the better are the chances of defending your brand in the future, and the stronger the brand remains.
Trademarks usually become subject to a use requirement five years after the registration of the mark. This means that the trademark owner must, if requested, be able to prove that the mark has been genuinely used in commerce for the goods and services covered by the mark. Request to prove genuine use of a trademark is often presented when the owner is defending their rights in an opposition or infringement matter, or in connection with a cancellation action based on non-use. In some countries, for example in the US, maintaining registration also requires that evidence of use is submitted to the office regularly.
Request of proving genuine use of a trademark often comes with a tight deadline, with only a couple of months to gather the evidence. The trademark owner must then show that the mark has been genuinely used during the five years preceding the application for cancellation – the trademark owner must prove past use of the mark, and proof of current use alone is not sufficient. If proof of use has not been collected regularly, compiling suitable evidence at short notice may prove to be surprisingly difficult and, in the worst case, lead to partial or complete loss of the trademark. It is therefore advisable to regularly document use of the most important trademarks, as this can be of great help if the mark later becomes subject to a cancellation request.
Maintaining strong trademark rights requires a consistent internal policy and clear guidelines on trademark use within the owner company. By using the trademark in uppercase letters and in its registered form, a company can communicate to the public that a certain sign is their trademark and thereby support its distinctiveness. It is especially important to immediately react to use of the trademark as a generic term, as this is detrimental to the distinctiveness of the mark and can lead to loss of rights and the mark becoming free for all to use.
Feel free to contact us if you need assistance in matters related to protecting or maintaining your brand, such as monitoring, collecting proof of use, trademark guidelines, or agreements. We assist our clients in all phases of the brand’s lifecycle.
Please don’t hesitate to reach out to our experts!