Understanding Article 47(2) and (3) EUTMR: Genuine Use of an Earlier Trademark in Opposition Proceedings – BLACK CAB (Figurative) vs. BLACK Cab (Figurative)

In the context of European Union trademark law, Article 47(2) and (3) of the European Union Trade Mark Regulation (EUTMR) plays a crucial role in opposition proceedings. This article outlines the requirements and implications regarding the genuine use of an earlier trademark when it is invoked to challenge a later trademark application.

Genuine Use Requirement

Article 47(2) EUTMR stipulates that when an applicant’s trademark is opposed by the owner of an earlier trademark, the applicant has the right to request that the opponent provide proof that their trademark has been put to genuine use. This proof must cover the five-year period preceding the filing date or, if applicable, the priority date of the contested trademark. The genuine use must be demonstrated within the territories where the earlier trademark is protected and must be related to the goods or services for which the trademark is registered and cited as the basis for opposition.

The provision serves as a safeguard to ensure that only trademarks actively used in the marketplace can be wielded to block new applications. The intent behind this rule is to prevent “trademark squatting,” where a party might register a trademark and then hold it without actually using it, merely to prevent others from entering the market.

According to Article 10(2) EUTMDR, if the opposing party does not provide such proof before the time limit expires, the Office will reject the opposition. Therefore, the opposition must be rejected pursuant to Article 47(2) and (3) EUTMR and Article 10(2) EUTMDR.

Conditions for Non-Use

There are exceptions to this rule. If the opponent can demonstrate that there are proper reasons for non-use of the trademark, such as obstacles beyond the trademark owner’s control, the opposition may still proceed even if the trademark has not been used in the relevant period. However, these reasons must be substantial and justifiable within the legal framework.

Consequences of Failing to Provide Proof

According to Article 47(3) EUTMR, if the opponent fails to provide sufficient proof of genuine use or fails to justify the non-use of their trademark, the opposition will be automatically rejected. This emphasizes the importance of maintaining and using a registered trademark, as failure to do so can result in the loss of rights in opposition proceedings.

Application and Strategic Implications

The application of Article 47(2) and (3) EUTMR has significant strategic implications for trademark holders in the EU. It compels trademark owners to actively use their trademarks if they wish to enforce them against new applications. For businesses, this means ensuring that trademarks are not only registered but also consistently used in commerce, particularly in the regions where protection is sought.

In opposition proceedings, applicants should be aware of their right to request proof of use and should consider doing so when faced with an opposition based on an earlier trademark. This can be a powerful tool to challenge opponents who may not have genuinely used their trademarks, thereby clearing the way for the applicant’s own trademark registration.