Proof of use of a community trade mark

Abstract

Chapter 1 deals with the definition of Use. There is no one authoritative definition of use. European Law simply provides descriptive definitions which are not exhaustive in nature. It is only article 5 of the Trade Mark Directive that gives some sort of definition of 'use'. The requirement is that use must be genuine. Experience from the United States demonstrates that the likelihood is that any definition of use will be too restrictive as the Courts tend to extend and transform the concept of use with time. Coming up with a quality definition of use can be difficult especially for the reason that the requirement of use differs in revocation and infringement proceedings and differs even according to the type of mark involved. Chapter 2 analyses the requirement of use for infringement. The requirement of use must be analysed in accordance with the essential function of a trade mark, that is, to guarantee the identity of origin. The debate in the subject area of infringement focuses on whether it is any use which can give rise to infringement or whether the use must be of the sign as a trade mark with the function to guarantee identity of origin. Courts have struggled in the past to interpret whether article 5 of the Trade Mark Directive requires use to be 'as a trade mark'. The most authoritative case is the Arsenal FC v Reed case where the ECJ stated that use as a trade mark was not the relevant requirement under article 5(1)(a). However subsequent judgments, especially in the UK, continue to cast a shadow of uncertainty over whether trade mark use is required for the finding of infringement. Chapter 3 deals with the requirement of use in opposition proceedings for non- use. The relevant article of the Directive is article 10. The concept of 'genuine use' comes to the fore in this chapter. This principle of 'genuine use' is not defined in European Legislation but has been defined by case law. The Ansul 4 case is the main case on this issue. There is no de minimis rule in relation to genuine use and the test is one of quality rather than quantity. Chapter 4 covers article 22 of the Implementing Regulation 2868/ 5. Use has to be proved as to the place where the use was made, the time in which the use was made and the extent of the use made. The OHIM Guidelines are authoritative on this topic.