Insights

Evidence is key: why maintaining records of trade mark use is critical

15 November 2022

Removal proceedings for non-use

A trade mark registration gives you exclusive rights to use the trade mark in relation to the specified goods and/or services covered by the registration. However, if you don’t use your mark then you risk losing it either partially or completely.

One of the bases in which a trade mark can be removed from the Register, is if the mark hasn’t been used in relation to the goods and/or services covered by the registration. This can be done either partially (i.e. in relation to only a portion of the goods/services covered) or fully (i.e. all of the goods/services covered which means that the entire registration is removed from the Register).

If your mark is successfully removed, then this means that you lose the exclusive rights to that mark. However, an application for removal of a registration based on non-use can be opposed, and the registration possibly saved. One of the ways you can oppose an application for non-use is by demonstrating that the trade mark was used in the past 3 years in relation to the relevant goods and/or services. As such, maintaining records and proof of your trade mark use is crucial, and can make defending the removal of your trade mark by a third party less stressful.

What evidence should you keep records of?

The type of evidence required to oppose this type of action will vary, but it will usually be examples of how and when your mark has been used or promoted in the course of trade in relation to the goods/services covered by the registration.

At a minimum, we recommend that you keep records of the following:

• Examples of use of the trade mark (as registered) on or in connection with the relevant goods and/or services in the course of trade over the years – this can include use on goods
  themselves, on labels, invoices, receipts, essentially anything that demonstrates use in the course of trade;
• Dated examples of advertising, packaging, promotional materials, and articles referring to your mark in connection with the relevant goods and/or services;
• Annual advertising and promotional spend directly attributable to goods/services provided under or by reference to the trade mark;
• Annual turnover for the goods or services sold under or by reference to the trade mark;
• Website extracts which clearly refer to the trade mark in connection with the relevant goods and/or services (yours or authorised third parties);

Take home message

Removal proceedings can be complicated and stressful. However, the more records kept over time, the easier this process can be if it happens to you. A qualified professional can help with this difficult process. Any questions or need more information as to the removals process? We’d love to help.