Användningstvånget för registrerade varumärken

Sammanfattning: If a proprietor of a trade mark has an interest in maintaining the registration of its trade mark, the proprietor must use the trade mark in such a manner that it constitutes genuine use. It should be noted that the requirements of use are essentially the same regardless of whether the assessment of use is done in light of the EU trade mark directive or the EU regulation concerning Community trade marks. The aim of this work is to provide the reader with insight of how a proprietor of a trade mark can meet the requirements of use and thus maintain a trade mark registration. In this work, the requirement of use will only focus on national trade marks registered in Sweden, trade marks with an international registration valid in Sweden and Community trade marks. In order to maintain a registration of a trade mark, a trade mark must first of all have been used in a way that constitutes genuine use. Genuine use is based on an overall assessment where the actual market, product type, customer and the proprietors’ business itself are taken into account. The qualitative assessment of trade mark use focuses on how use has been undertaken. On the other hand, the quantitative assessment analyzes to what extent a trade mark must have been used. According to case law trade mark use must not have been particularly extensive or continuous. However, use must not have not been undertaken solely in order to maintain the registration of a trade mark. A proprietor of a trade mark must undertake genuine use within a period of five years (the so-called relevant period). However, this does not impede taking into account use that has been undertaken after the relevant period. In addition to this, use must have been undertaken within the territory where a trade mark is protected. Whether this has happened is based on the fact if use of a trade mark has involved any elements with connection to this territory. As regards to the use of Community trade marks, use in a single Member State is sufficient to maintain a registration throughout the EU. Even if a trade mark proprietor has not used its trade mark in relation to all the goods and services the trade mark has been registered for and partial cancellation is undertaken, the registration might still be maintained to a degree that does not reflect the actual use of the trade mark. Trade mark proprietors are also able to, within certain limits, modify the design of a trade mark. However, the distinguishing characteristics and dominant components, which were a part of a trade mark registration, must have not been omitted in the use of the trade mark. Conversely, new distinguishing characteristics and dominant components, not previously included in a registered design, should not to be added to a trade mark. All previously mentioned requirements must be fulfilled if a trade mark proprietor wishes to maintain the registration of its trade mark. If a proprietor of a trade mark has valid reasons to not have used its trade mark during the required five years, the duration of the relevant period will extend. These valid reasons do not solely relate to circumstances of force majeure, but, to some extent, to factors related to the proprietors’ business strategy. The regulation of the requirement of use shows a high degree of flexibility.