Guide to Registration of European Community Tradeamrks (4) - Use evidence for a Community trademark

According to Article 50 (1-a) of the Community Trademark Regulation:

"The rights of the proprietor of the Community trade mark shall be declared to be revoked on application to the Office or on the basis of a counterclaim in infringement proceedings:
(a) if, within a continuous period of five years, the trade mark has not been put to genuine use in the Community 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 a Community 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 [...]".

We would like to underline that use evidence may be asked in the course of an opposition proceeding against registration of a French trademark or French part of an international trademark application or a Community , and that they have to be presented within a one-month period, which is a very short time.

We therefore recommend you to already prepare a file of use evidence knowing that:

- the evidence shall have a sure date (date of publication of a magazine containing advertising, date of invoices\'85);

- the date shall be included within the 5-year period requested (new evidence shall therefore be included in the file every year if possible) ;

- the mark has to appear on the evidence. For example invoices which only make appear a reference shall be furnished together with a proof that this reference corresponds to the trademark ;

- the trademark used shall be the one registered. Use of a mark in a modified form which does not alter its distinctive nature is possible. According to the French case-law, for example, the use of the trademark "Loris Azzaro" does not prevent the revocation of the trademark "Azzaro" (Court of Appeal of Paris, January 26, 2001) ;

- evidences shall be presented for each designated good or service. Use evidence of a good does not prevent the revocation of similar goods (for example clothes and shoes) ;

- the use has to be done by the owner of the mark; or one has to prove the consent of the owner of the mark ;

- the use has to be done in France (the use in foreign countries is not considered, but affixing of the mark on goods in France exclusively for export is considered as a use in France) ;

- the use has to be serious, it is therefore important to accumulate a number of evidence; and

- the evidences have to be in French (for advertising, catalogues\'85) or translated in French (for invoices\'85).

We suggest you to send us regularly use evidence, so that we shall constitute a file of use evidence of the mark "MOVINT + device" for designating "Movement, transport and distribution of goods" in France as from 1998. In that manner, we could inform you of the pertinence of the evidence and remind you in case of lack of evidence long before the day when we could need it.