One of the major limitations of a trademark is the use requirement. An owner of a trademark must put its trademark in use 3 or 5 years after registration. Often, this is a weak spot of a trademark, sometimes an Achilles heel. Collecting evidence of use is rather a heavy burden and sometimes quite difficult. Keeping a file with relevant material (some brochures, examples of a product, advertisements and invoices) is recommended for your important trademarks. But when is a owner required to show use? We know the use declarations in the US. In the EU, use is often a topic during oppositions and other disputes. In probably most cases based on trademarks that have to be in use, the defense will ask for proof of this use. But with the EUIPO, you can also file an action for revocation. A quite easy procedure which puts the burden completely on the owner of the EU trademark, which has to show the use. Often, this action occurs in respect of a trademark which has been cited as a high risk in an availability search. Contesting the use of the high risk is an easy way to clear the risk. But sometimes, it is a clever action in case of a trademark against which a normal procedure based on older rights is not straight forwarded as the trademarks are not quite similar. Like the recent case of Disney against the below trademark. In stead of filing an invalidation action (based on confusion), which would have an unsure result, Disney filed an action for revocation. As the trademark holder did not filed any evidence at all, there was a maximum result!
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