Prove it or Lose it: Collecting Evidence of Trade Mark Use

At this time of year many trade mark owners will start thinking about the renewals cycle and gathering evidence of use for those renewals processes and other maintenance deadlines that need it.

Collecting and cataloguing evidence of use is part of good trade mark hygiene and – as well as helping with renewals – it is invaluable should your mark face a cancellation action or if you need to oppose a potentially infringing trade mark application.

The risks of failing to provide robust evidence of use were made clear in the case of one of the world’s biggest brands, McDonald’s, which initially lost its EU trade mark for “Big Mac” when its legal team submitted what was considered insufficient evidence of use after Irish fast food chain SuperMac’s challenged the registration. Although McDonald’s appealed the decision and was successful in regaining its mark in some classifications, SuperMac’s is appealing once again.

As this case shows, collecting evidence of trade mark use is an important part of managing the mark throughout its life (especially financial evidence, such as sales figures). Therefore, when collecting evidence of trade mark use, what should attorneys, paralegals and in-house teams be looking for and how can you put workflows in place that will make the job easier in future?

What does “evidence” of use look like?

To identify what you can collect as “evidence” of use, you first need to be clear on what “use” means from a legal perspective. This can be difficult to grasp, especially for non-legal specialists, but the principle from case law is that genuine use is actual use of the mark to distinguish the origin of goods and/or services you have protected under it. In other words, you are using the mark in the course of external trade with customers who are buying the goods that you have protected under it.

From that definition, it follows that “evidence” of trade mark use must be external facing. In other words, it must be outwardly offered and apparent to actual or potential consumers. It could include things like:

• Advertising
• Product Packaging
• Point of Sale material
• Invoices

• Websites and/or social media analytics
• Sales records of goods bearing the mark
• Awards nominations/wins
• Consumer surveys

All these should either feature the mark itself directly or must clearly relate to goods/services bearing the mark.

It’s also worth noting that, while the above is a guide, different countries have different requirements around evidence, so it is important to check with the local IP office that your evidence meets the necessary conditions.

What format should evidence take?

Evidence of use can accumulate rapidly, so it’s important to store it in manageable formats that are also suitable for submission through electronic systems during renewals or in court cases.

It is essential that digital files are logically named, dated, and catalogued with clear reference to the mark they relate to, when and where the use was, as well as the classification the evidence supports. This means all members of the trade mark team can easily understand what is stored, where it is stored, and find it when it is needed.

Ways to document evidence include:

• Digital photos of physical product samples and promotional items.
• Screengrabs of company websites and third-party websites featuring the relevant products: the file should include the website’s URL and the date the screengrab was taken.
• Documents relating to sales or marketing: saving these in non-editable formats such as PDFs reduces the risk of them being altered after collection.

For all of the above, it is essential to record what mark each piece of evidence refers to, as well as when, how, and where it was used.

How do approaches differ between in-house legal teams and external law firms?

In private practice, the collection of evidence is not usually the direct responsibility of the team handling the renewal, but you need to make sure you give clients ample warning of impending deadlines. This avoids a last-minute scramble for evidence that can result in a less-than-perfect collection of information and cause stress for you and your client.

If you work in-house, it is likely to be your job to co-ordinate evidence collection. This really is one of those jobs that is best done as you go along, rather than trying to gather it all at the last minute in the face of an urgent deadline. It’s a good idea to cultivate relationships with the marketing and finance teams and encourage them to share promotional materials and sales figures throughout the year. That way, when the time comes, it should just be a case of attaching the relevant files to the renewal application.

How WebTMS can help manage evidence of use

WebTMS trade mark portfolio management software has several features that help you store and manage your evidence of use. You can link your evidence documents to the relevant records, providing an audit trail over the life of the trade mark.

If you have a large brand portfolio to manage, handling evidence collection can be a significant undertaking. We suggest using the WebTMS Assignment module to track and collect evidence in specific countries, as it can be used to track any registry-facing recordal. This streamlines collation and makes evidence easily accessible from the relevant trade mark record, which is linked to the maintenance deadline or dispute record.

You can also use the WebTMS Case Management module to manage a multi-brand portfolio more broadly, diarising regular evidence collection opportunities and reviews to ensure you are on top of everything.

Another top tip is to “do future you a favour” by setting automated reminders for next year’s maintenance deadlines. These don’t only need to mark the deadline itself. For example, if a product catalogue is produced at a particular time of year, set a reminder to collect a digital copy as evidence.

Get your evidence in order

Maintaining evidence of use records is invaluable for renewals and to support oppositions to potentially infringing trade mark applications. Having your evidence readily available saves time when renewing and strengthens your position as a registered mark holder.

Ensuring that all your evidence is clearly recorded and linked to the relevant trade mark will pay dividends throughout the life of the trade mark.

To learn more about how WebTMS can support your trade mark management practice, contact the team on [email protected].