• 2005-04-06
  • By Liudas Ramanauskas, an associate at Sorainen Law Offices in Vilnius
Are we safe after registration of a trademark?

Nowadays it is not a question whether it is worth it to protect a company's trademark. The more relevant issue is to properly choose the scope of protection 's the choice being between national, community and international protections. However, could it be said that after the registration procedures are completed the job of the proprietor is done and the proprietorship of the trademark is secured?

Both the Trademark Directive No. 89/104/EEC ("the Directive"), which is implemented in all three Baltic states, and the Trademark Regulation No. 40/94 ("the Regulation"), governing the registration and protection of Community trademarks, envisage an active role by proprietors in order to maintain the registration of a trademark.

The Directive, as well as the Regulation, obligates the proprietor to start the genuine use of the trademark in respect of goods and/or services it is registered for within five years after registration procedures are completed. Otherwise the trademark is subject to sanctions, which may end with revocation of its registration. The same sanctions are applicable if the genuine use of the trademark is suspended during an uninterrupted period of five years.

Thus the main requirement on the part of a proprietor is to use a trademark on the market genuinely 's or, to put it differently 's to use it effectively and actively. Genuine use is something that goes beyond simple use. It should be sufficient to affect the market, to leave a specific recollection/association in the minds of consumers, to have an impact on a circle of competitors and to create market share.

Generally, if a trademark is used as a business name or only internally in a company, this might not be regarded as genuine use. This applies also to the use of a trademark on shop signs, on the back cover of catalogues, in various publications, on labels, or mentioning a trademark in annual business reports or in telephone directories.

Moreover, proprietors of trademarks should be cautious while referring to the corporate form (such as UAB, SIA, Oy, etc.) in their trademarks. On the other hand, advertisement of a trademark is usually sufficient to prove the genuineness of its use.

A trademark is also deemed to be used genuinely if it is used by third parties with the consent of the proprietor, if it is affixed to goods or to the packaging solely for export purposes, or if it used in a form differing in elements insofar as it does not alter the distinctive character of the trademark. However, the proprietor of the trademark should be aware of the fact that addition, or omission, of even one letter might be considered as alteration of the distinctive character and, therefore, be qualified as non-use.

Proper reasons for non-use are the only possible excuse a proprietor can rely on if the trademark is not genuinely used. This is something similar to force majeure 's i.e., factors not depending on the will of the proprietor, such as requirement of authorization to use a product from the state authority, technical problems, strikes, and governmental interference. On the other hand, delays in arranging the market, such as commercial difficulties on the part of the proprietor, economic downturns, reorganization, cyclical nature of some industries, waiting for the outcome in another dispute, usually are not counted as proper reasons for non-use.

To sum up, registration of a trademark is only the first step to be taken to protect a trademark. In order to survive the revocation procedures, proprietors are obliged to use their trademarks genuinely on the market.