Use it or lose it: trademark revocation for non-use

Revocation of a trademark on grounds of non-use is possible where the trademark has ceased to function as an indication of origin for a product or service. The right attached to a trademark and granted to the mark owner thus subsists and survives only to the extent that the trademark is actually used within a reasonable period following registration.

Invalidation versus revocation
Trademark invalidation results from a claim for cancellation of a trademark registration on the grounds of:

• non-compliance with or breach of the absolute grounds for registration;
• bad-faith registration; or 
• any other comparable reason.

Therefore, it applies only to trademarks that should not have been registered in the first place. In trademark revocation claims, by contrast, the trademark is deemed to have been registered correctly initially, but full or partial cancellation of this registration is sought because, for example, the mark has become generic or misleading, or has not been used. 

Revocation for non-use is often treated as a civil penalty if the trademark deviates from the initial purpose for which protection was granted. Thus, legal texts on the issue have set out clear and specific conditions with respect to the grounds for revocation by the competent authorities.

The law establishes a period of five years during which the trademark owner can launch the trademarked products or services on the market. This five-year period may either commence upon registration or be any five-year period after the mark is put to genuine use; however, the law stipulates that the five-year period should be continuous and uninterrupted. If the trademark is not used within that period, it shall be considered to have been:

• abandoned;
• registered as a back-up trademark; or 
• registered to prevent others from registering the same or a similar mark.

In such cases the mark shall be revoked. 

Proving genuine use
With respect to the trademark’s genuine use, one of the most important factors to be considered is the relevant  territory in which the mark is used. National trademarks follow the general rule that use of a trademark within a single county of a country where that mark is protected is sufficient to prove genuine use across the entire country; while for a Community trademark, in most cases genuine use within one EU member state is equivalent to proof of genuine use of the mark across the European Union. In this respect, most courts follow a uniform practice. However, when applying the territoriality aspect to an internationally registered trademark, genuine use should be assessed with respect to each designated country.

As a trademark can be used only in relation to the products or services for which it was registered, the issue is whether the owner can prove genuine use for any of the products or services, all of the products or services or only a few products or services in each class. Considering that, when registering the trademark, the applicant has the option to request protection for one or more products or services in a class, if a trademark has been registered for more products or services it should be used for those products or services for which it was initially registered.

General indications in class headings are relevant for the assessment of use; if a trademark is used for more than one product or service and is properly classified in the same class under one of the general indications, genuine use of that trademark is proved.

Further, the European courts widely accept the possibility to divide products into sub-categories with respect to proof of genuine use. In Aladin (T126/03) the European Court of Justice (ECJ) introduced the option to identify sub-categories of products that can be considered independently within a sufficiently broad category of products or services. However, in the same decision the ECJ held that it is almost impossible for a trademark owner to prove use of all possible variants of products detailed in the trademark upon its registration.

With respect to the claimant’s interest in a trademark revocation process, there must be a connection between the products or services traded or supplied by the claimant and those for which the trademark represents a barrier and for which genuine use must thus be proved. However, there are contradictory opinions on revocation limits for trademarks under the Nice Classification with respect to products in sub-categories, and particularities apply in the field of pharmaceutical products.

While the Romanian courts tend to consider the product to be the ultimate limit for revocation of a trademark and accept no sub-division of Nice classes, the European courts recognise sub-categories in the field of pharmaceutical products, associating the limits for revocation with the product's therapeutic indications. This is because the category of pharmaceutical preparations is deemed to be sufficiently broad, thus allowing for the identification of a number of sub-categories that can be considered independently.

There are several relevant cases in this field, such as Respicur (T-256/04), Famoxin (T-493/07) and Kremezin (T-487/08). In all of these cases the ECJ defined the adequate sub-categories for pharmaceutical preparations in Class 5, considering the purpose and intended use of a therapeutic preparation on the grounds of its therapeutic indication. Thus, the therapeutic indication was considered to be the key element in defining the relevant sub-category of pharmaceutical products.

Although ECJ case law is not binding on the Romanian courts, it is hoped that these benchmark cases will lead to a more stable case law framework and the implementation of unified practices in the field.