IDS discusses relevant issues regarding the proof of use of trademarks from the perspective of the European Union, China and Brazil’s regulations

IDS discusses relevant issues regarding the proof of use of trademarks from the perspective of the European Union, China and Brazil’s regulations

Last Tuesday (7), the Dannemann Siemsen Institute (IDS) held another IDS Agenda, this time discussing relevant issues on proving the use of trademarks. The event was presented in English and took AIPPI Resolution “Proving trademark use” as a starting point to debate aspects related to the procedure for proving the use of a trademark for the purposes of maintaining registration, from the perspective of the laws of the European Union (EU), Brazil and China.

Speakers at the event included Lena Shen, a Chinese lawyer specializing in trademark prosecution and IP enforcement, and Klaudia Błach-Morysińska, a Polish patent attorney, and a European trademark and design attorney, specialized in Intellectual and Industrial Property Law. The meeting was moderated by Rafael Atab, a lawyer, partner at Dannemann Siemsen and IDS Board Member, whose practice focuses on strategic management of IP rights portfolios, especially complex issues in the field of trademarks.

After introductions by IDS academic coordinator Patrícia Porto, the event began with moderator Rafael Atab contextualizing AIPPI Resolution 2023, referring to important points regarding proof of use of the trademark, for the purposes of maintaining registration, especially when defending the trademark against a forfeiture application. Rafael also spoke about the Brazilian panorama on the subject, explaining the changes to the INPI’s trademark examination guidelines regarding the presentation of evidence of trademark use. These changes were introduced by INPI/CPAPD Technical Note No. 03/2022 of December 3, 2022, which deals with aspects of trademark forfeiture proceedings.

Rafael then passed the floor to Lena Shen and asked how, from the Chinese perspective, the regulation of forfeiture actions for lack of use of a trademark was handled. She explained that, according to Chinese trademark law, a trademark can be canceled in China if it is not used continuously for three (3) years. She noted that Chinese law does not apply the “grace period” for the commencement of trademark exploitation in the same way as EU law. For Chinese law, even in the initial period of three (3) years, if the trademark ceases to be used continuously, there is a risk that the trademark will be canceled. The lawyer pointed out that there is no requirement to prove intent to use before applying to register the trademark, but that, according to the 2019 Amendment to China’s Trademark Law, if there is a suspicion of bad faith in the application, China’s National Intellectual Property Administration may require proof of use or intent to use.

On the other hand, Klaudia Błach-Morysińska gave a European overview of the issue. Here, she began by saying that if a trademark registered in the European Union (EU) is not used within five (5) years from the date of registration, or if the trademark is subsequently not used for a period of five consecutive years, third parties may seek to cancel it on the grounds of non-use. Klaudia also addressed other particularities of the EU, such as the difficulty of demarcating the relevant territory where proof of use must be made. Because the European Union is made up of several countries, there is always the question of whether it is sufficient to prove use only in one EU country or region, or whether use needs to be proven in all EU member countries (or in a substantial part of the economic bloc).

The discussion also covered the differences in the nature and types of evidence accepted in each of the jurisdictions, as well as issues relating to the validity of proof of online use of the trademark and the use of advertising materials and advertisements as evidence.

The recording of the event will soon be available on the IDS website.

Note: For quick release, this English version is provided by automated translation without human review.