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Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

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Anthonia Ghalamkarizadeh
Birgit Clark
Blog Administrator
Christian Tenkhoff
Fidel Porcuna
Gino Van Roeyen
Markku Tuominen
Niamh Hall
Nikos Prentoulis
Stefan Schröter
Tomasz Rychlicki
Yvonne Onomor
Workshop on use at MARQUES Spring Meeting

More than 200 Council and Team members are taking part in the MARQUES Spring Meeting at the Hilton Amsterdam this week.

Today, the MARQUES Education Team hosted a workshop titled “To use or not to use… that is the question”. The panel comprising trade mark experts from the EU, US and UK discussed issues relating to use prior to filing, in the prosecution stage and post-registration.

The panel was chaired by Ehud Gabrieli and comprised Team members Sandra Muller, Howard Shire, Claudia Csaky, Daniela Paull, Graeme Murray, Charlotte Duly and Shane Smyth.

The wide-ranging discussion covered topics including:

  • The different approaches in the US, EU and UK in the courts and IP offices
  • When use (or, in certain jurisdictions) intent-to-use has to be demonstrated and how to do this
  • The impact of the Sky v SkyKick case concerning the breadth of use and bad faith in the EU and UK
  • When it is possible to raise use objections during prosecution or opposition
  • How to show intent to use in the United States, for example by having a domain name and active website
  • Black-and-white versus colour registrations
  • The opportunity to file series mark applications for a series of up to six marks in the UK
  • How to approach negotiations on limitations and the possibility of partial revocation
  • The time period for showing use post-registration and how use can be demonstrated
  • Where the burden of proof lies in non-use cancellation actions
  • Specific issues relating to use of UK comparable trade marks (derived from EUTMs)
  • Whether there are other forms of protection for well-known marks if they are cancelled for non-use
  • Issues arising from re-filing (evergreening)
  • Will token use suffice and what constitutes genuine use?

There were also several questions from the packed audience on the topics discussed.

The Spring Meeting continues today and tomorrow with Team meetings and presentations. Look out for further posts on the Class 46 blog.

Read more about the Spring Meeting programme on the MARQUES website here.

Posted by: Blog Administrator @ 12.11
Tags: Spring Meeting, trade mark use, workshop,
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MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.

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