In some countries, the absence of use for a certain period of time can no longer be cured by the resumption of genuine use. This is particularly the case in the USA. Closer to home, the case of Italy is interesting to note; the Italian law has long provided (CPI, art. 24.3) that if the resumption of use of a trademark indeed allows its owner to avoid revocation, it does not necessarily enable it to oppose a competitor, who could have inserted itself between the date of filing of the mark in question and the date on which it started or resumed use. The introduction of provisions that are quite similar to this Italian system is undoubtedly one of the noteworthy contributions of the “Trade mark Reform Package”. Whilst retaining the principle of the curable nature of the risk of revocation in case of non-use, the new Directive (EU) 2015/2436 and the new Regulation (EU) 2017/1001 significantly limit the effects of this resumption of use in terms of protection granted to third parties who have inserted themselves by filing a trademark. The relevant provisions on this issue are disseminated within these last two texts. The clearest and most synthetic provision can be found in the 30th recital in the Directive, which states :
“In order to ensure legal certainty and safeguard legitimately acquired trade mark rights, it is appropriate and necessary to provide that, without prejudice to the principle that the later trade mark cannot be enforced against the earlier trade mark, proprietors of earlier trade marks should not be entitled to obtain refusal or invalidation or to oppose the use of a later trade mark if the later trade mark was acquired at a time when the earlier trade mark was liable to be declared invalid or revoked (…)”.
Member States must comply with the new directive by 14 January 2019 at the latest (article 54). Recitals 23 and 24 deal with this subject in the new Regulation on European Union trade marks (regulation in force). As regards the European Union trade mark, these provisions are of interest when the court before which the matter is brought is not a court of the European Union trade mark (in case of infringement action against a national mark, for instance) and that such court cannot revoke the prior European Union trade mark invoked (articles 124 and 128 of Regulation (EU) No 2017/1001), thus avoiding a stay of proceedings.
These new provisions will further complicate much of the litigation cases relating to trademarks. In particular, they oblige owners to collect proof of use of their marks throughout their lives in order to ensure that they are perfectly enforceable vis-à-vis third parties. It is, in our view, doubtful whether the objective sought by these texts, namely legal security, has been achieved.
Eric Le Bihan
1Articles 17, 18, 44 and 46 address this issue within the Directive.
2Articles 16, 47.2 and 64 address this issue as regards the EU Regulation.