Genuine Use Requirement in the UK: Lessons for Trade Mark Owners
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One of the most common pitfalls faced by trade mark owners in the United Kingdom is the requirement of genuine use. It is not enough to register a trade mark; the law expects the owner to put that mark to real commercial use. Failure to do so may result in loss of valuable rights. This article explores what ?genuine use? means under UK law, why it matters, and how businesses can safeguard their trade mark portfolios.
1. The Legal Basis
Under section 46 of the Trade Marks Act 1994, a registered trade mark can be revoked if:
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It has not been put to genuine use in the UK for a continuous period of five years after registration, or
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Use has been suspended for any continuous five-year period.
This provision ensures that the trade mark register is not cluttered with unused marks and that rights are reserved for those who actually engage in trade.
2. What is Genuine Use??
The term ?genuine use? is not defined in the Act but has been shaped by case law. Courts have consistently emphasised that:
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Token use is insufficient ? placing a mark on goods purely to preserve rights is not enough.
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The use must be real commercial exploitation, consistent with the function of a trade mark (to indicate origin and distinguish goods or services).
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The use must be more than minimal, though it does not have to be large-scale.
In Ansul BV v Ajax Brandbeveiliging BV (C-40/01), the European Court of Justice (whose principles still apply in the UK post-Brexit unless changed by UK law) confirmed that genuine use means use that is consistent with the essential function of a trade mark and not merely for preserving the rights.
3. Examples of Genuine Use
The following are generally accepted as genuine use in the UK:
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Sales of goods or provision of services under the mark, even on a modest scale.
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Advertising, promotion, and marketing campaigns that reach the relevant public.
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Online sales or services directed to UK consumers.
By contrast, the following are often found insufficient:
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Internal company use without exposure to the public.
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Single or minimal token sales designed only to maintain registration.
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Use outside the UK with no genuine targeting of UK consumers.
4. Burden of Proof
In revocation proceedings before the UKIPO, the burden lies on the trade mark owner to prove genuine use. This typically requires evidence such as:
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Invoices, sales figures, and distribution data.
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Marketing materials, catalogues, and advertisements.
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Website screenshots and online sales records showing UK consumers.
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Affidavits or witness statements from company officers.
The evidence must cover the relevant period and demonstrate continuous and bona fide use.
5. Lessons for Trade Mark Owners
The genuine use requirement carries significant implications for businesses:
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Keep records ? maintain systematic documentation of use, including invoices, brochures, and online presence.
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Use the mark consistently ? avoid long gaps in use; even if the business is small, regular and real activity helps.
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File defensively but realistically ? don?t register marks you cannot or do not intend to use. Overly broad specifications are vulnerable to attack.
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Audit your portfolio ? regularly review your registrations to ensure they are supported by genuine use in the UK.
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Consider licensing ? use by an authorised licensee counts as genuine use, provided it is properly documented.
6. A Cautionary Tale
A well-known example is the Sky v SkyKick litigation, where questions of over-broad specifications and bad faith were raised. While the case focused primarily on clarity of goods and services, it also highlighted how unused portions of a registration are vulnerable to revocation. Businesses should be realistic and precise about the scope of their applications.
7. Post-Brexit Considerations
Since 1 January 2021, EU Trade Marks (EUTMs) no longer cover the UK. Owners of EUTMs received ?comparable UK rights? automatically, but these too are subject to the genuine use requirement. Importantly:
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Use of a mark in the EU does not count as genuine use in the UK for UK rights.
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Owners must now show UK-specific use to defend their UK registrations.
This makes it critical for international businesses to ensure that they actively market and sell in the UK if they wish to maintain protection.
8. Conclusion
The genuine use requirement is not a mere technicality?it is a core principle of UK trade mark law. A trade mark registration is only as strong as the evidence supporting its use. Businesses should therefore view registration not as the end of the journey but as the beginning of a cycle of ongoing responsibility: using the mark, keeping records, and being prepared to prove it.
For trade mark owners, the lesson is clear: use it or lose it.
