When the mark has not been used for years: what it costs to be wrong
A trade mark that has stood unused for years still sits on the register, looking exactly like an actively defended mark. It is not. Being wrong about this costs the owner the ability to stop infringers, to license the mark on favourable terms, and to rely on it at customs. The certificate proves registration, not use.
What the EUTMR actually separates
Regulation (EU) 2017/1001 (EUTMR) treats registration and genuine use as two distinct conditions, not one. Registration keeps the mark on the register and lets the owner renew it, sell it, license it. Genuine use is what keeps the mark defensible once someone else has a reason to test it. A mark that has been registered but never put to genuine use in connection with the goods or services it covers becomes exposed to an application for revocation, brought by any party with an interest in clearing the register.
The EUTMR does not ask the owner to prove use on a fixed schedule. It asks for proof only when a challenge is filed, and the proof then has to cover a period that has already closed. Waiting until that point to assemble evidence is the single most common way owners get this wrong.
Genuine use, in this framework, means real commercial use aimed at creating or holding a market for the goods or services concerned. Use that exists only to keep the registration technically alive, without a genuine commercial purpose, does not meet that standard. Dressing up token use as genuine use tends to fail exactly when it is tested, because the evidence for token use does not survive scrutiny.
How this usually surfaces
The gap rarely gets noticed by the owner first. It surfaces when an opponent in opposition proceedings requests proof of use of the earlier mark, when a defendant in an infringement action raises non-use as a defence, when a buyer's due diligence team runs a use audit before signing, or when a customs application needs a mark strong enough to survive challenge. Each of these moments arrives with a short window to respond, not months of preparation.
By the time any of these moments arrives, the evidence that would have been easy to collect at the time has often become hard to find. Staff who handled the launch have left. Marketing archives have been reorganised or deleted. Invoices sit in accounting systems that were retired and are no longer searchable.
What changes once the mark is exposed
Nothing changes on the register itself while no one challenges the mark. What changes is its practical value in every situation where the owner needs it to do work rather than simply exist.
| Where the mark is relied on | What non-use exposure does to it |
|---|---|
| Opposition or infringement proceedings against a third party | The other side can raise non-use as a defence and force early disclosure of use evidence |
| Customs enforcement under Regulation (EU) No 608/2013 | An application to customs authorities rests on a mark presumed valid and enforceable; exposure to revocation weakens that basis and can slow or block the application |
| Licensing or assignment negotiations | Buyer or licensee due diligence surfaces the gap and the price or royalty gets discounted for it |
| Portfolio renewal decisions | Renewal fees get paid, year after year, for a right that could be cancelled the moment anyone tests it |
The pattern in every row is the same. The mark works until someone asks whether it should. That question tends to arrive mid-litigation, mid-acquisition, or mid-customs seizure, never earlier and rarely at a convenient time.
What to do, in order
- Instruct the trade mark owner, or in-house counsel, to gather every piece of evidence of use: invoices, packaging, advertising material, dated website captures, trade show records.
- Have the trade mark attorney sort that evidence by class and by territory, not by calendar year, because non-use exposure is assessed class by class and territory by territory.
- Mark the gaps honestly: classes with no evidence, territories with no evidence, evidence that exists only internally and never reached the market.
- Where a gap is confirmed, decide with counsel whether to narrow the specification voluntarily, resume genuine use before any challenge lands, or accept the exposure as a known risk.
- Check every licence agreement: use by a licensee counts toward the owner's position only if the licence exists in writing and the owner exercises real control over the licensed use.
- Keep the evidence file current going forward. A file built after a challenge is filed looks assembled for the dispute rather than kept as a business record, and is judged accordingly.
Who decides, and on what basis
An application to revoke an EU trade mark for non-use is decided by the office that administers the EUTMR, on the file the owner puts in front of it. The office does not go looking for evidence of use on its own initiative, and it does not assume use just because the mark has been renewed. It rules on what is submitted, nothing more, and a thin file loses even when the underlying use was, in fact, real.
The evidence has to relate to the period actually in dispute, not to use before or after it. Evidence of recent use does not answer a challenge about a period that closed years earlier, and owners who submit evidence for the wrong period lose on a technicality that had nothing to do with whether the mark was genuinely in use.
National marks follow the equivalent logic under the national law that implements the same principle, decided by the national office or court with jurisdiction over that registration. The forum changes with the register in question; the underlying question, whether use was genuine, does not.
Where this pattern repeats
The same cost of being wrong shows up outside trade marks, in situations that look unrelated until the evidentiary logic is compared side by side.
When an ex-employee appears as an inventor elsewhere and the question is left unresolved, the same kind of evidentiary gap opens on the patent side: a right that looks settled until someone with standing decides to test it.
When a migration is blocked by an exit clause, the technology contract carries an equivalent exposure, a clause that reads fine on paper until the day it actually has to be relied on.
When reserve assets are held by a third party, the digital-asset structure carries the same kind of risk: nothing appears wrong until proof of the underlying position is demanded.
What this page does not resolve
This page does not tell you whether a specific mark has been used enough, in a specific country, to survive a specific challenge. That answer depends on the actual evidence file, the specification as registered, and the territory in question. It has to be built against those facts, not against a general description of the rule.
Jurisdiction-specific asset questions sit on a separate track. For a worked example of what can be established from registry data in one jurisdiction, see Asset in Slovenia and the deadline.
Verified
Checked against: Regulation (EU) 2017/1001 (EUTMR); Regulation (EU) No 608/2013. Verified against the current consolidated text at the time of publication.
Frequently asked
What is the first step when the mark has not been used for years?
Pull the evidence together before anyone asks for it. Invoices, packaging, advertising, dated captures, sorted by class and by territory, not by year.
Which deadline is already running?
The non-use clock under the EUTMR runs from registration and is not paused simply because the mark sits idle. It only stops once genuine use resumes or a challenge has been decided.
Who decides, and on what evidence?
The office that administers the EUTMR decides, based only on what the owner submits. It does not investigate use independently, and it does not assume use from renewal alone.
The same non-use question often surfaces first inside a coexistence negotiation. For that scenario worked through in full, see When a coexistence agreement is proposed in detail.