Whenever a trademark registration application
is submitted, the applicant has to take the obligation to use the trademark
very seriously. Only if it is used does a distinctive sign do its job of singling
out one product from all the others on the market. Most legislations the world over
require a trademark to be used in a certain form within certain periods;
otherwise, third parties may file for expiration due to disuse and strip the
registrant of rights in the trademark.
Trademark regulations in Spain also
incorporate a system of mandatory use, which differs in practically nothing
from the legislation of the United Kingdom. Under UK law, trademarks must be
used in British territory within five years of their date of registration.
Failure to put a trademark to continuous, systematic use places the owner in a perilous
position, as happened in the recent case of the Gucci logo. The ability to
provide sufficient proof (such as invoices and catalogues) is indispensable and
crucial for the defence; if the evidence is thought to be too scanty, the owner
will lose all rights in the sign. This can happen even in the case of so
well-known a trademark as the Italian fashion firm Gucci’s “GG” sign.
Gucci’s “GG” logo, a trademark
requested for classes 3, 14, 18 and 25 and owned by Guccio Gucci S. PA., was
recently revoked after having spent more than 20 years registered in the United
Kingdom. The cause: The German fashion company Gerry Weber International filed
for revocation due to non-use. The British trademark office considered Gucci’s proof
of use insufficient to defend classes 14, 18 and 25 of the international classification
and upheld only class 3 for cosmetics and cleaning preparations. In the wake of
the fateful decision issued by Judy Pike on 5 November, at least Gucci is
allowed to keep using the “GG” trademark to sell its perfumes in class 3. Gucci
registered the “GG” logotype in the United Kingdom in four classes, 3, 14, 18
and 25. The application covered products such as perfumes, watches, handbags
and t-shirts. However, in June 2012 the Gerry Weber fashion firm asked to have
the trademark revoked, claiming that it had not been used from 2003 to 2012.
UK legislation and Spanish legislation
both say trademarks can be revoked if they are not used for five years after
registration. Gucci’s reply, filed by its in-house attorney Vanni Volpi, was
considered vague; the evidence submitted to prove the use of the “GG” logo was insufficient
and fuzzy, giving the sales figures for several years but not stipulating the
sales in the relevant territory, the United Kingdom. Apart from the lack of sales
invoices, the Gucci belts in the catalogues submitted for the defence were made
of leather, while class 25 is limited expressly to belts made of fabric, not
leather. However, the evidence submitted to the British authorities to prove
use of class 3, “non-medicated toilet
preparations, cosmetic preparations, perfumes, soaps, dentifrices, preparations
for the hair; anti-perspirants, depilatory preparations” was accepted,
because it afforded more-evident, general proof of the active presence of
Gucci’s “GG” perfumes on the market. So, Gucci was able to keep at least one class
and thus did not lose its trademark entirely. The UK Intellectual Property
Office’s decision means Gucci cannot protect the “GG” logotype for
scarves, shirts, t-shirts, handbags, watches or coats in the United Kingdom.
We have to remind you that trademark rights in Spain
are acquired through registration, but the applicant must intend to use the trademark.
This proviso is designed to prevent indefinite monopolies over distinctive
signs that are not going to be used. Therefore, once registration of your
trademark is granted, use your trademark for all the products and/or services
covered throughout the territory. This is fundamental. It is also a very good
idea to gather evidence (invoices, catalogues, press cuttings) you can file
with your defence if anyone ever seeks to have your trademark revoked for lack
of use.
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