This article addresses the issues of trademark registration in the EU and the UK, in particular, the nuances that may arise after the registration is canceled.
In a recent case, the issue of whether it is possible to use TM during the grace period of registration was considered, even if subsequently the rights to TM were canceled for non-use.
EU and UK legislation respond differently to the question of whether the owner of a national trademark right can seek damages for violation of rights to TM at the end of the grace period of registration. Consider this as an example of a specific dispute over the use of the French trademark.
European Trademark Cancellation
The French trademark “StG” (conventional name for elite alcohol) was registered in the EU in early 2006. Six years later, the copyright holder of the sign discovered that another company was distributing liquor under the same brand. The copyright holder filed a trademark infringement case in a regional court in Paris. However, in the course of litigation, it turned out that the registration of a trademark in France was revoked from 2011.
The firm claimed the copyright holder for TM stated that neither EU law nor French law had a specific provision that, during the 5th period after registration, the intellectual property owner must prove that he used TM in order to obtain trademark protection in the EU.
Can the trademark owner receive compensation for damage caused as a result of TM rights violation before the date of the trademark cancellation.
CJEU provided clarification for the issue.
Trademark registration in the European Union
The EU Member States have the right to independently determine when the cancellation of a trademark comes into force. Cancellation of a trademark for non-use in France shall enter into force upon the expiration of a five-year period after the registration of the mark.
The Court of the European Union ruled that the fact that the TM was not in use does not exclude the possibility of compensation for violations. It all depends on the particular Member State and its legislation. Despite the fact that in France, the owner of a TM has the right to initiate a case of violation of rights, even if the mark was recalled for non-use. It is worth noting that in the UK, brand owners do not have this right.
Trademark registration in the UK: use of TM
In the UK, the trademark owner has the right to prohibit using the mark only to the extent that the registration of the trademark in England, on which he relies, is not subject to cancellation on the date of filing of the claim for violation.
All of the above confirms the importance of the genuine use of a trademark that is valuable to your business. Any gaps in use should be justified. It is essential that the mark is used in the form in which it is registered.
If you are interested in registering a TM in the UK or learn more about using a trademark in France, IQ Decision UK seasoned specialists will provide qualified assistance. Our advice will help you reduce the risk of loss of property rights, or easily register a trademark in the jurisdiction of interest to you.