How to prevent a trademark from lapsing through lack of use
Although it may come as a surprise to some, if trademarks have not been used during a period exceeding five years they will lapse, and titleholders will lose their rights in the mark. This is because the monopoly on exclusive exploitation of the trademarks is conditioned on the requirement of diligent use, which is designed to avoid an accumulation of “dead” trademarks in the market.
The consequences of failure to comply with this requirement are regulated in the Trademark Act 17/2001, of 7 December 01, according to which, any person may apply for a declaration of lapse of a Spanish trademark if real and effective use of that mark has not been made in Spain for an uninterrupted five-year period. If lapse of the trademark is confirmed, that mark will no longer be effective from the time of the act or omission giving rise to its lapse, with retroactive effect from that time, proceeding to its cancellation and removal from the register.
So how is it possible to ensure that the rights in a trademark are maintained?
In addition to the time requirement of five consecutive years, as mentioned, and the territorial requirement, requiring use of the mark in Spain (at Community level it is sufficient to provide proof of use in just one country of the European Union) trademark holders can also implement further measures to ensure their rights:
- Diligent use of the trademarks, ensuring that they are used for all the products and services that they cover and in the form in which they were registered, avoiding the addition of any elements which would alter their distinctive nature. If logos are modernized or if any significant changes are made to the mark it is advisable to file new trademarks that adapt to the change.
Use of the trademark also needs to be real and effective, so the trademark should be used on product packaging and labels, catalogues, invoices, advertising, social networks, etc.
- Ability to provide proof. Make sure all proof and evidence of use is kept, including the date or place in which the products were distributed so that they are available if and when they are needed. Failure to do so, or providing insufficient or vague proof could lead to a loss of trademark rights.
This is exactly what happened with the Italian fashion trademark Guccio Gucci S.p.A., which in 2013 partly lost its exclusivity in its British trademark consisting of the interlinked letters “GG” because insufficient proof was provided in a cancellation action brought by the German company Gerry Weber International AG. The Italian trademark had been registered in 1984 to cover perfurmery, jewelry and watches, bags and leather goods, clothing and footwear, and it submitted proof including magazine pictures and articles, website printouts and sales invoices for the products. Having analyzed the evidence, the examiner only accepted the proof concerning perfumery products, considering the remaining evidence to be imprecise, insufficient and not very accurate, because it failed to specify dates or places. As a result, Gucci is able to continue using its trademark, however, in the United Kingdom that use is no longer exclusive, and it cannot prevent third parties from using similar marks.
- Create and maintain a management and supervision policy for the trademark portfolio as part of an appropriate protection strategy, entrusting defense of trademarks to a suitably qualified specialist.
Our Business of Fashion Law team publishes a regular newsletter on fashion and the law which deals with issues such as these, along with other legal matters concerning the fashion, luxury goods and design sector.
Garrigues Intellectual Property Department
