Features of proving use of trademarks
Keywords: Intellectual property, Intellectual property rights, Trademark, Intellectual property Agency
Biography of author:
Emil Bashirov is a senior lawyer responsible for intellectual property practice as well as matters related to unfair competition and consumer rights protection at “EKVITA” consulting company. He received a bachelor degree in law from the Academy of Public Administration under the President of the Republic of Azerbaijan in 2012 and LL.M. degree in commercial and corporate law from Erasmus University Rotterdam in 2013. Emil is a member of Bar Association of the Republic of Azerbaijan since 2018 and thus, is entitled to represent both local and international clients in courts of all instances.
Exclusive rights for a trademark is awarded when it is verified by a certificate, which is registered in the public register. However, registration of a trademark and obtaining of a certificate does not mean that this trademark is assigned forever to a certain rightholder. Legislation of majority of the countries including the laws of Azerbaijan Republic provides for the possibility of early termination of legal protection on grounds of non-use of a certain trademark. In Azerbaijan this is possible upon submission of an application by an interested party to the Appellate Board of Intellectual Property Agency when there are sufficient reasons to believe that a certain trademark is not used with the possibility to subsequently challenge the decision of the administrative body by any party before an appropriate administrative court of Azerbaijan Republic.
The article 30th of the Law of Azerbaijan Republic on Trademarks and Geographic Indications («the Law») provides for the possibility of termination of a trademark on grounds of its non-use: “The Appellate Board of Intellectual Property Agency can cancel the registration in case of non-use of the registered trademark or geographical indication for 5 uninterrupted years since the date of registration or for 5 years since the date of submittal the application by any person for its non-use”.
For a more deep perception of this risk and taking certain preventative measures by a rightholder in order to protect his trademark, it is important to clearly understand what is meant by “use” in the legislation. Article 26 of the Law gives us examples of use:
- the application of a trademark or geographical indication on goods, packages of goods it refers to and services rendered;
- the use of trademark or geographical indication in ads, publications, signboards, exhibits and objects of fairs, organized in the Republic of Azerbaijan as well as other documents, connected to the carrying-out of goods to market;
- the use of a trademark with the aim of production, storage, carrying out the goods to the market, import and export of goods;
- the offer of goods for sale, the sale of goods and service rendering;
- the use of a trademark by its owner and a person who has the right to use it on the basis of a license contract.
When the potential application for early termination of the trademark on grounds of its non-use is submitted, the burden of proof lies with the rightholder who should submit sufficient evidence of use of his trademark or excusable reasons of inability to use it in commercial turnover. In the event of possible subsequent challenge of the decision of the Appellate Board the same evidence shall also be examined by appropriate courts. It is also important to mention, that the rightholder shall prove the use of his trademark in the certain class of goods and services in which registration of a similar trademark is claimed by the applicant, otherwise, the application for early termination can be partially satisfied in regards the classes in which the registered trademark is not used. For instance, a trademark “X” registered in 19th class of International Classification of Goods and Services for construction materials and also in 20th class for furniture, which is actually used only for production and sale of furniture, can be annulled in 19th class if there is an actual applicant for termination with a similar trademark who seeks its registration in this class. Given this fact, it is recommended for a rightholder to keep the documentation in regards to use of his trademark, especially in such classes of goods or services that are important for his business. The most frequent examples of evidence are:
- payment documents proving carrying-out goods in commercial turnover;
- documents proving that a trademark is used under control of a rightholder when it is not used by the latter himself (e.g. licensing agreement for granting rights of trademark use);
- advertising materials;
- customs declarations proving importation of goods on the territory of Azerbaijan Republic as well as documents proving its transportation;
- documents proving exhibiting goods;
The list above is not exhaustive, so provision of other types of evidence like publicly available materials – pricelists, ads, excerpts from websites and posters, as well as client lists, photos of goods, annual reports and testimony can also be taken into account. A rightholder can also ask specialized companies to conduct sociological examination of trademark use. A consumer survey allows to determine how long consumers have known the trademark, how long and thanks to what sources they came across the designation and which manufacturer or provider it is associated with.
In some countries, there is an interesting judicial practice regarding the establishment of the fact of “symbolic” use of a trademark, which is considered insufficient for retention of validity of a registration. The specialized administrative body or the court in these countries when deciding cases regarding early termination of a trademark on grounds of non-use may also take into account production volume of goods. For instance, when goods are not exclusive or high-priced and are intended for mass consumption, the low volume of commercial turnover may be considered “symbolic” use and, thereby, lead to the cancellation of the trademark on grounds of non-use.
There is also a possibility to retain validity of the trademark when the rightholder submit evidence of existence of circumstances beyond his control that did not allow the use of the trademark. As an example, it is possible to describe the situation, when the rightholder licenses the right of use of the trademark to the company, which for financial or any other reasons does not cope with the establishment of the production of goods. In such a case, the Appellate board or the court can establish that non-use took place due to circumstances beyond control of the rightholder.
Summarizing the foregoing, it is possible to note that in order to successfully deal with challengers of the trademark owned by the rightholder, it is recommended that such measures be taken to minimize risks, such as the issue of advertising booklets or other materials in which products will be offered for sale in classes to which the goods belong , the creation of a website and the placement of information on the promotion of goods on it, as well as the preservation of documentation on trade, including customs declarations. It is important for the rightholder to always keep in mind the existence of risk of early termination of his trademark and timely assess the availability of evidence for the use of the mark in relation to the classes of goods or services that are of great significance for his business.