You snooze you lose, and with trade marks, you don’t use you lose….

A trade mark is filed based on actual use thereof or an intention to use the trade mark. Where there is no intention to use, a trade mark application may be opposed by an interested party based on that ground. The importance of using your trade mark is not only relevant at the registration stage, it is still important even after the trade mark has been registered.

Once a trade mark has been registered, certain foreign territories, such as Mozambique and Cape Verde, require a proprietor to file a Declaration of Intention to Use 5 years after the date of registration. This is an application by the proprietor confirming that they are using the trade mark and providing proof of use of the trade mark. Where the filing of a Declaration is a requirement in a specific territory, a third party can file for cancellation of the trade mark registration where the proprietor has not filed the Declaration.

Certain foreign territories, for example Eswatini, require a trade mark renewal application to be accompanied by proof of use. Without the proof of use, the trade mark registration cannot be renewed, unless circumstances beyond the proprietor’s control prevented use (although these “non-use” circumstances are not easy to prove).

The law also allows a third party to apply for cancellation of a trade mark where it has not been used for a continuous period of time. The period varies per territory but generally ranges from 3 to 5 years. The reasoning behind the “use” requirement is to encourage the registration or renewal of trade marks that are being used rather than registering or renewing trade marks simply to prevent others from using them.

In light of the above, it is important not only to continuously use your trade mark, but also to retain proof of use of your trade mark.