Use It or Lose It: Why Trademark Protection Depends on Real Business Use
Trademark protection follows a simple rule. What you don't use, you lose. You see this in everyday life. A muscle weakens when you stop training it. A language slips when you stop speaking it. Trademarks follow the same pattern under the trademark use requirement.
In the European Union, the protection of an EU trade mark depends on genuine use for the goods and services listed in the registration. If a company cannot demonstrate real use, rights can be limited or revoked.
What genuine use actually means
Genuine use means real, public and outward commercial use of the trade mark as an indication of origin for the relevant goods or services. The use should be intended to create or preserve a market for those goods or services.
Token activity carried out only to keep a registration alive is not enough. At the same time, genuine use does not necessarily require high sales volumes. The assessment depends on the relevant market, the nature of the goods or services, and the scale and frequency of use.
Use by a licensee or another party with the proprietor’s consent can also count. A slightly different version of the registered mark may qualify where the differences do not alter its distinctive character.
What happened to Airbnb
A recent example involves Airbnb in a General Court ruling. The Court upheld the EUIPO Board of Appeal’s decision to partially revoke the AIRBNB word mark for lack of genuine trademark use across a range of goods in Class 9 and services in Classes 35, 37, 39, 40, 41 and 42, among others advertising services.
For advertising services, the Court reiterated that genuine use requires assisting third parties in promoting their goods or services. Airbnb’s evidence showed only promotion of its own platform, which is considered self promotion and not genuine use for advertising services. As a result, those services were removed from the scope of protection.
Why This Matters
This type of result is not always problematic. Trademark protection is defined by legal requirements, but the decisions that shape it come from the business strategy. Effective protection depends on understanding the company’s current activities and future direction. As the business evolves, what is relevant to protect evolves as well.
Many businesses secure a wider set of goods and services in the early stages to preserve flexibility, sometimes including advertising services as a defensive measure. Trademark protection is legal in form, but strategic in substance. Companies file what they believe they may need, knowing that priorities shift as the business evolves. Over time, genuine use becomes the factor that defines the actual scope of protection.
Business Strategy and Trademark Strategy
A trademark strategy does not stand on its own. It follows the broader business strategy. The business decides which markets matter, which offerings scale and where value is created. The trademark strategy should reflect these choices and evolve as the company’s plans change.
When business strategy and brand protection strategy are aligned, trademark protection remains relevant and enforceable. This alignment strengthens the brand’s market position and the company’s ability to act against misuse.
What This Means
For companies, the key takeaway is that effective brand protection requires more than registering marks. It requires an understanding of how the business operates. The trademark use requirement means that registration is only the starting point. Actual use maintains strength and protects long term brand value.
Understanding the brand strategy is essential for an effective trademark strategy and for building a resilient brand protection strategy over time.
This article is for informational purposes only and does not constitute legal advice. If your company would like a review of its trademark portfolio or guidance on developing a best in class brand protection strategy, please contact us at Abrande.
How to prove genuine use
When genuine use is challenged, the evidence should establish the place, time, extent and nature of the use. Useful records may include:
dated invoices and sales reports;
packaging, labels and product catalogues;
dated website, app-store and marketplace records;
advertising supported by reach, traffic or transaction data;
distribution and licensing records; and
documents connecting the mark to the exact goods or services concerned.
A logo appearing on a website may show that the brand exists, but it does not automatically prove genuine use for every item in the registration.
Source:
Airbnb case
Invalidity EUIPO
https://www.euipo.europa.eu/en/help-centre/tm/faq-invalidity-and-revocation
