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Use or Non-Use?
date: 2013-10-25Gloria Q. Wu

I recently attended the FICPI Open Forum in Sorrento, Italy. During the conference, there was a very interesting mock trial session called "Necessary Geographic Extent of Use and Use of a Translation of a Mark", which discussed about whether use of variations of a registered trademark (e.g. change of color, gesture / head direction of the animal device in the mark, translation of words into different languages) would or should be considered sufficient use to overcome non-use cancellation in different jurisdictions. Though the general principle of requiring genuine and commercial use seems to be shared by most countries, the specific examination criteria differs from country to country,

One of the issues discussed was the legislative intent of such "non-use cancellation" procedure in laws, which I believe is the most important question to answer, and the answer of which would be the basis of evaluating whether certain examination criteria is reasonable, fair and maybe recommendable for other jurisdictions to follow.

To answer this question, we may first look at the nature and function of trademark, which would be "distinguishing source of goods/services", "carrying good will", as every trademark attorney would say, and so, if the mark is not in actual use, of course such nature and function cannot be fulfilled and performed. But what if the mark is used, but not in the exact same version as registered? In my personal opinion, the test should still be whether such use of variations of trademark can still distinguish the source of goods/services and carry the good will of the trademark owner in the relevant public.

If we consider trademark as a living creature, its registration certificate as its "birth certificate", its sign of life is being used in the market, just like the heartbeat and breath; similar to the consequence of stopping heartbeat and breath for a certain period of time, if the trademark stops its sign of life (i.e. being used in the market) for a certain period of time, it can die; also similar to the growth and natural development of any living creature, trademark also evolves all the time, because of the need to better fulfilling its mission, i.e. "distinguishing source of goods/services", "carrying good will", because the market is changing, the consumers need and taste is changing, the "good will" itself is also changing. It might be the most natural and unavoidable fact that trademark owners need to modify the trademark from the version originally designed and registered some years ago to certain version which still functions as telling the consumers "these products are from my company, and you can have the same trust as before", but can convey such message in the best manner to match the latest image of the company, and meet the latest market's need.

If we all agree that such evolvement of trademark is required by the market, should law discourage or even punish such activity by denying the use evidences of the later modified trademark in overcoming the non-use cancellation of the original trademark?

If the relevant public in the market already recognize the later version of mark as carrying the same good will of the owner, should the law play the role of the evil queen here?

Let us also look at the consequences if the use evidences of the later version of mark cannot overcome the non-use cancellation against the original mark, first of all, the party who files the non-use cancellation is usually an owner of a similar mark filed later than the original mark, who will cheer for the cancellation of the original mark because its own mark may become registered. Is it a fair and reasonable that the owner of the original mark which has been registered earlier and continued to be active in the market manufacturing and selling products must now stop its business because otherwise it would infringe the exclusive right of the later registered similar mark? Is it fair and reasonable that consumers who have been familiar with the earlier mark should now watch more carefully on the labels to see if the products are from the owner of later registered similar mark or otherwise would be confused? Is it the legislative intent of the non-use cancellation procedure? I believe not.

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