European Union legislation on trade marks establishes an obligation for the owner of a registered trade mark to use that mark in a genuine manner. The owner must put the mark to genuine use within a period of 5 years following its registration (Article 18(1) EUTMR). However, the owner has a ‘grace period’ of 5 years after registration, during which it cannot be required to demonstrate use of the mark in order to rely upon it — including in opposition proceedings before the Office. During the grace period, the mere formal registration gives the mark full protection. Once this period lapses, the owner may be required to prove genuine use of the earlier mark.

When it comes to the requirement to prove use in opposition proceedings before the Office, it is important to bear in mind that the purpose of Article 47(2) and (3) EUTMR is not to assess commercial success or to review the economic strategy of an undertaking, nor is it to restrict trade-mark protection to only large-scale commercial
use of the marks (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 32; 08/07/2004,
T-203/02, Vitafruit, EU:T:2004:225, § 38).

The Office does not inquire ex officio whether the earlier mark has been used. Such examination takes place only when the EUTM applicant makes an explicit request for proof of use. Such a request, if the legal requirements are met, triggers the procedural and substantive consequences laid down in the EUTMR, EUTMDR and EUTMIR. 

The EUTMR, the EUTMDR and the EUTMIR do not define what is to be regarded a ‘genuine use’. However, the Court of Justice (the ‘Court’) has laid down several important principles as regards the interpretation of this term.

In Minimax (11/03/2003, C-40/01, Minimax, EU:C:2003:145), the Court established the following principles:

• genuine use means actual use of the mark 

• genuine use must, therefore, be understood to denote use that is not merely token, serving solely to preserve the rights conferred by the mark

• genuine use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of goods or services to the consumer or end user by enabling the latter, without any possibility of confusion, to distinguish the product or service from others that have another origin 

• genuine use entails use of the mark on the market for the goods or services protected by that mark and not just internal use by the undertaking concerned 

• genuine use must relate to goods or services already marketed or about to be marketed and for which preparations by the undertaking to secure customers are under way, particularly in the form of advertising campaigns

• when assessing whether there has been genuine use, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, in particular whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark 

• the circumstances of the case may, therefore, include giving consideration, inter alia, to the nature of the goods or services at issue, the characteristics of the market concerned and the scale and frequency of use of the mark 

• use need not, therefore, always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or services concerned on the corresponding market 

In its order of 27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50, the Court further elaborated the Minimax criteria as follows:

• the question whether use is sufficient to preserve or create market share for the goods or services concerned depends on several factors and on a case-by-case assessment. The characteristics of the goods and services, the frequency or regularity of the use of the mark, whether the mark is used for the purpose of marketing all the identical goods or services of the proprietor or merely some of them, or evidence that the proprietor is able to provide, are among the factors that may be taken into account

• use of the mark by a single client that imports the goods for which the mark is registered can be sufficient to demonstrate that such use is genuine, if it appears that the import operation has a genuine commercial justification for the proprietor of the mark 

• a de minimis rule cannot be laid down