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IP Cases & Commentary – Details

25 March 2010

Evidence and Proof of Use in Trade Mark Proceedings Before the UKIPO and OHIM

Evidence is the means by which you prove an allegation before a tribunal.

In the trade mark registration process, evidence may be required at various stages. It is usually submitted in written form but oral evidence may sometimes be given, or required.

In proceedings before the UKIPO, written evidence usually takes the form of a witness statement accompanied by relevant exhibits. However, the registrar may require evidence to be submitted by way of a statutory declaration or affidavit. Evidence being submitted by declarants outside the UK would typically take the form that would be acceptable for use in proceedings in their country.

In proceedings before OHIM, evidence is accepted in a variety of formats but, for materials being submitted by parties in the UK, witness statements, statutory declarations or affidavits are recommended. Where the evidence relates to information that is internal, greater weight is given by OHIM if it is submitted in the form of a sworn declaration, where criminal sanctions for making a false statement exist in the country of the declarant.

When a trade mark application is examined, evidence may be needed to show that a descriptive or non-distinctive term is entitled to registration because it has “acquired distinctiveness” as a result of the use made of the term prior to the date the application was filed.

For more information on the application process, see the D Young & Co article  "Trade Mark Application Procedure and Timescales" (linked resources, right).

This evidence must show that a significant proportion of the public in the relevant territory (i.e. the UK or the EU for a UK or CTM application, respectively) identify the relevant goods/services because of the trade mark. The views of the average consumer of that product must be taken into account - the evidence must show that they have been educated to recognise the source of the goods/services by reference to the mark in question. The manner in which the mark has been used needs to be demonstrated, as well as the context of the use made.

For 'acquired distinctiveness', information relating to the extent of use, including turnover figures, market share, intensity and length of use, geographical spread, investment in promotion and advertising, and evidence from the trade itself, may assist in showing the required level of distinctiveness. Exhibits, such as brochures, catalogues, price lists, annual reports and advertisements, customer and/or market surveys, etc are needed to support the information provided.

A mark will only be registered on this basis if the evidence shows that distinctiveness had been acquired prior to the date the application was filed, so all evidence must pre-date the date of the application. It will also only be registered in relation to the specific goods/services in respect of which acquired distinctiveness has been shown (not for a broader specification).

If a trade mark is opposed, evidence may be required by the applicant to support a defence of his application; or by the opponent to establish the existence and/or validity of his earlier rights, as well as a likelihood of, or actual, confusion.

For more information on the opposition process, see the D Young & Co article titled "Trade Mark UK and CTM Opposition Proceedings" (linked resources, right).

In the UK, oppositions can be based on the inherent registrability of a mark (absolute grounds), or on earlier conflicting rights existing through use or registration (relative grounds). A CTM can only be opposed on relative grounds.

Evidence to support a claim that a mark is not registrable on absolute grounds typically includes publicly available information and materials to show that the mark is descriptive or otherwise non-distinctive (e.g. due to its shape or function, that it is a generic term, or in common use in the trade), that it is deceptive, is contrary to public policy, offensive, or it conflicts with a specially protected emblem.

For oppositions based on earlier rights, the evidence needed must be tailored to the particular earlier rights claimed. Earlier rights include TM registrations or applications, earlier registered marks with a reputation, 'well known' trade marks, unregistered 'common law' marks, where reliance is placed in the law of passing off, copyright, design right or registered designs.

Earlier registered rights are easily proved by submitting certificates of registration or extracts from the official registers of the country in question. However, where an earlier mark has been registered for more than five years, counting form the date of publication of the opposed trade mark, it is important to ensure that the earlier mark has been used in relation to the goods/services relied on as the opponent will most likely be put to proof of use of his mark in relation to these goods/services. Indeed, in the UK a declaration confirming the extent of use of such marks is required at the time an opposition is filed.

Proof of use must show 'genuine use' of the mark during the relevant five year period – token use, simply to maintain the validity of a registration, is not acceptable. The volume of trade does not necessarily have to be high (this will depend on the nature of the goods/services) but must be genuine. Proof of use usually includes copies of a range of invoices and VAT receipts, price lists, advertisements, product packaging, sales figures etc. All of the information should be dated and relate to the relevant five year period.

In order to establish that an earlier right enjoys an enhanced reputation, is a well known trade mark or embodies the necessary goodwill to establish common law rights in passing off, evidence of a similar nature as that needed to show acquired distinctiveness will be needed. However, the burden of proof of such unregistered rights is very high. Not only will the extent of the use made be critical, but additional evidence in the form of independent market research, opinion polls, customer surveys, press articles, public awards and recognition, and/or evidence from independent third parties will be needed to substantiate such a claim.

Evidence may also be required after a trade mark has been registered, if it is challenged by way of revocation or invalidity proceedings.

Revocation proceedings can be based on non-use or on a claim that the mark has become generic or misleading. Grounds of invalidity include claims that the mark should not have been registered on absolute or relative grounds (similar to opposition proceedings). The evidence in each case will have to prove the claim made.

Evidence filed in defence in any proceedings must address, and disprove, claims made and evidence filed, by the claimant. It is, therefore, important to properly consider the claims made against you in order to identify and collect relevant materials for use as evidence in support of your rights.

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