When should you keep a record of trademarks? Now!

A recent judgement of the EU General Court (Now Wireless Limited v OHIM) should serve as a useful reminder of the importance of maintaining evidence of the use of a registered trademark to ensure the Mark is not subject to cancellation for lack of use.

By Tony Catterall, head of intellectual Property, Taylors

A continuous period of non-use of a registered mark of five years means that third parties may successfully apply for cancellation which would mean that the registrant no longer had the protection of the Mark.

In the Now Wireless case, Starbucks (HK) Limited was granted registration of the Mark above for “Now”. In 2004 and in 2010 Now Wireless Limited filed an application for its revocation on the basis that it had not been put to genuine use in the European Union in respect of all the services for which it had been registered for a continuous period of five years. The Mark was revoked in certain use classes by the Cancellation Division in 2011. Now Wireless appealed that decision, seeking revocation in Class 42 as well.

The OHIM Board of Appeal found that genuine use of the Mark had been shown by the production of press cuttings and a list of the destinations of the proprietor’s field engineers, proving genuine use of the contested Mark in London and the Thames Valley which was sufficient to constitute genuine use in the European Union. The Appeal was dismissed and Now Wireless had to pay the costs.

The Court took into account web page extracts showing the nature of the services provided, press cuttings and advertising campaigns using the Mark. In order to maintain rights in trademark registrations, make sure that you maintain a folder of evidence; dated copies of marketing material should be retained, as should records of annual turnover for goods promoted under the trademarks and annual marketing/advertising costs for the goods sold under the Marks.