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intellectual property (IP) | 02 Jul 2019
BY Delene Bertasso

intellectual property (IP)

Use: are you sure can you prove it?

Use: it’s without question one of the biggest issues in trade mark law. It’s an issue that can come up in a number of scenarios. At least a genuine intention is needed to use a trade mark to get it registered. Considerable use may help get a trade mark registered in the face of various objections. Once registered, the trade mark needs to be used to make sure that the registration can’t be cancelled for non-use by a competitor. Considerable use may ensure that the registration has wider enforcement rights than most other registrations. In fact, in some cases, considerable use may even give enforceable rights to the trade mark even without a registration.

So, if use is so important, why do most companies pay so little attention to it?

A recent article written by Graeme Murray of Marks & Clerk highlights the issue. In the article, there’s a discussion of two cases. In the recent Big Mac case, the European Union (“EU”) authorities cancelled an EU registration for the trade mark Big Mac on the basis that McDonald’s had been unable to prove use of the trade mark. Peculiar, you might think, given how ubiquitous the trade mark is, but the European authorities are strict. They rejected the evidence that had been put forward on the basis that it was defective.

How so? Well, the affidavits attesting to use all came from employees of the company and, as the tribunal said, company employees can’t be trusted to be independent (truthful?). What is required apparently is evidence from independent third parties who have encountered the trade mark. Brochures and posters showing use of the trade mark had been submitted, but these were also rejected because there was no evidence of where they had actually appeared, or who had actually seen them. A print-out of the company’s website had been submitted, but this was rejected because there was no evidence of who had actually seen it. A copy of a Wikipedia page had been submitted, but this was rejected on the basis that Wikipedia entries can be edited. The court set the bar very high indeed.

The second case that Murray refers to is the decision by the US trade mark authorities to allow registration of the trade mark Chunky for soup. A highly descriptive name to be sure, but one the US authorities accepted has become distinctive. As the author says: ”Campbell’s was able to provide clear evidence that it has used and promoted the term Chunky in the US on such a scale that American consumers identify Chunky as trade mark indicating a soup which originates from Campbell’s.” 

It’s unlikely that the South African authorities will be quite as strict regarding evidence of use as the EU authorities were in the Big Mac case. Yet, recent South African judgments do suggest that the courts won’t be a pushover either. South African judgments have spoken of the need for “clear and unambiguous factual evidence.” They’ve said that evidence will be rejected if it is not only vague to such an extent that it smacks of evasiveness but is also contradictory.” They’ve said that the evidence must make it quite clear which company within a group actually used the trade mark. But they will accept failure in the sense that evidence of a genuine attempt to launch a brand that ultimately failed commercially is still genuine use.

So, what should South African trade mark owners be doing about proof of use? They should certainly be putting proof of use at the forefront of their trade mark management systems and efforts. Evidence should be kept from the very onset, from the stage when there is little more than a vague intention to use the trade mark – this evidence might cover things like market research, consumer surveys, focus groups, test launches and the like. Evidence of use should be readily accessible as it may be required at fairly short notice. This, of course, means that evidence should be kept on an ongoing basis and not left for the day when it is actually required. Evidence of use should be broken down as much as possible – per product, per country, per year. Keeping evidence of use is certainly no easy task.

There probably aren’t many South African companies that have the resources to do effective proof-of-use management in-house, but is something that companies need to pay more attention to.

Reviewed by Gaelyn Scott, head of ENSafrica’s IP department.

Delene Bertasso

senior associate | IP 

+27 83 399 6172