Ruling sparks debate over whether preparatory work alone constitutes genuine use

It is well established in EU and Polish law that a trademark must remain in use to maintain its registered status. Under current provisions, a mark must be used for the goods or services covered by the registration within five years of being granted. A mark that goes unused for five successive years will be vulnerable to revocation, unless there are legitimate reasons for non-use.

In assessing genuine use, it must be established whether there has been genuine commercial exploitation of a mark, that is, use that maintains or creates a share of the market for the goods or services protected by the mark. The nature of the goods or services, the characteristics of the market, and the scale and frequency of use of the mark must also be established.

The genuine use of a mark should be public and outward facing – real and not symbolic. Such factors are subjective. Symbolic use (eg, the issuance of several invoices per year), is not considered genuine. On the other hand, using a mark to a small extent proves to be sufficient in cases of specialised or very high-priced products.

Genuine use must be demonstrated by solid and objective evidence and must concern the place, time, extent and nature of the use of the mark. In practice, entrepreneurs often have difficulty proving circumstances, manner, place, time and goods or services on which the protection right was used.

The Polish Patent Office and the administrative court connect genuine use with the essential function of the mark: the function of identifying origin. The dominant view is that preparatory work (eg, concluding an agreement on importing goods bearing the trademark, intensive advertising in the media or concluding a licence agreement for the use of a trademark) does not constitute genuine use.  Such acts are not yet considered by the law as genuine use (II GSK 726/08, II GSK 70/06).

Added to this are questions raised by the Syrena case (23 September 2020, T‑677/19, SYRENA, EU: T:2020:424), which are still prompting lively – and unresolved – debate. In this case, the General Court ruled that the preparatory work to secure customers constitutes genuine use of a trademark, even if this work does not result in a single sale. The judgment stressed that it is necessary to demonstrate that the use does not have the sole purpose of preserving the rights to the mark – there must also be a commercial strategy behind it. The case dealt with the racing car market, a luxury product that is not intended for everyday use. The market is characterised by relatively low demand and the production of a limited number of vehicles to a specific order. The trademark proprietor presented evidence proving that he invested a lot of time, effort and expense into the preparatory work. Consequently, the court found genuine use.   

The Syrena ruling was issued in particular circumstances and referred to a specific market. It remains the case that proof of use does not have to be proof of success or good strategy. If a trademark owner can prove that all its activities are designed to introduce the goods or services sold under the mark into the market, trademark offices should consider such evidence as proof of use. Nevertheless, bearing in mind the previous position of courts judicature and commentators, there is unlikely to be any change in this field in the near future.