Your Trade Mark – Use it or Lose It!

Written by Mark Eiffe | November 4, 2022

Ireland & the EU

Your trade mark’s essential function is to be a badge of origin. It distinguishes your goods or services from those of other undertakings or competitors in the same market. However there are certain Irish and EU laws around use of the trade mark – one being that it must actually be put to genuine use!  

If, within five years from the date of the registration of your trade mark, you have not put the trade mark to genuine use in the Member State /Ireland (as the case may be depending on if your trade mark is an Irish trade mark or an EU trade mark) in connection with the goods or services in respect of which it is registered, then, unless there are proper reasons for the non-use, you risk having the trade mark revoked. 

This is the fate that has recently befallen Apple Inc. The company may be the apple of the eye of generations of Corkonians given its long and deep relationship with the city but the US giant has recently fallen foul of the EUIPO for not putting its registered trade mark ‘Think Different’ to genuine use in any Member State and was therefore revoked. 

The EUIPO said mere ephemeral use is not enough to prove genuine use. The fact that the phrase appears in tiny script in a marginal position on the outer packaging of computers and accessories (just above the barcode to be precise), as well as the ‘big ticket’ nature of such purchases for the general public and the fact a buyer would in all likelihood try out a display model (obviously presented without its packaging) or purchase online, was not, therefore, genuine use of the trade mark as they were unlikely to see the trade mark prior to purchase. Apple could not submit suitable evidence of ‘Think Different’ being used in any marketing in the EU 

The Board of appeal also hinted that the weak distinctive character of the trade mark was not helping Apple’s case and that Apple’s submitted evidence of press articles and material from 1997 were irrelevant as this use predated the relevant period by over 10 years! 

No matter how well-known your company is and how successful any given advertising campaign of your trade mark has been in the past, if you want to keep the rights in your trade mark, you must keep using it as such. Mere use is not enough. You cannot just relegate your sign to a clearly secondary role (in this case, small inconspicuous print on the outer packaging of a product that the public would likely pay little attention to and may only receive after purchase)  

All of the lawyers at Briffa are experts in trade mark law and offer a free consultation to advise you on the best way to proceed should you be served with revocation proceedings or if you wish to bring a revocation claim.  Feel free to get in contact to arrange a consultation to determine whether an Irish or EU trade mark is at risk of revocation. Just email, call or fill in a contact form to book a consultation meeting. 

Written by Mark Eiffe – Solicitor

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