Termination of Trademark Protection Due to Non-Use

The primary function of a trademark is to distinguish goods and services in the marketplace. If a designation is not used, it ceases to perform this function and remains merely a formal barrier for other market participants who wish to use similar designations.

In such cases, the mechanism of early termination of trademark protection becomes a tool to overcome this barrier and allows an interested party to proceed with registering its own trademark and protect itself from claims by bad-faith rights holders.

Specifics of Early Termination of Trademark Protection Due to Non-Use

Early termination of trademark protection due to non-use is only possible if at least three years have passed since the date of its registration. Such cases are considered in court by the Intellectual Property Court.

At the same time, the law provides for a mandatory pre-trial dispute resolution procedure, which requires the prior sending of an “interested party proposal” to the trademark owner.

The interested party proposal is a formal demand letter in which the trademark owner is offered to:

• either voluntarily terminate the legal protection of their trademark in full or in respect of part of the goods and/or services;
• or conclude an agreement with the interested party for the assignment of the exclusive right to the trademark in relation to all or part of the goods and/or services;
• in practice, the proposal of the interested party sometimes also includes a request to issue a consent letter allowing the registration of the interested party’s own trademark.

If the demands are not satisfied, the interested party is entitled to bring the matter before the court. In such proceedings, the claimant must prove its interest, while the trademark owner must prove actual use of the trademark within the three years preceding the submission of the proposal. In the absence of evidence of use, trademark protection is terminated in full or in the relevant part.

If the trademark owner fails to prove use of the trademark for the goods and services in respect of which the claimant has demonstrated its interest, the trademark is subject to early termination for those goods and services.

When Might Early Termination of Trademark Protection Due to Non-Use Be Needed?

Most often, this is required in the following situations:

• Rospatent has cited a similar trademark against your application that is not actually being used;
• The owner of an unused trademark has sent you a claim or filed a lawsuit seeking to prohibit its use;
• You are a trademark owner yourself and have discovered a similar but unused trademark in the register that is preventing you from registering your own mark.

Despite the apparent simplicity of the procedure, it involves important nuances. For example:

• it is necessary to properly comply with the pre-trial procedure and send the proposal to all addresses of the trademark owner;
• the claimant must prove its interest as of the date of the interested party proposal by providing supporting documents;
• the defendant, in turn, must prove actual use of the trademark in the form in which it is registered, or with minor changes that do not alter the essence of the trademark.

Errors at any stage may affect the outcome of the case, so all requirements must be carefully considered in advance.

Legal Services of Zuykov and partners

The procedure for early termination of trademark protection is a complex legal process that requires not only a deep understanding of legislation and case law, but also a well-balanced strategy at every stage: from preparing evidence to representing interests before the Intellectual Property Court.

Therefore, such disputes are best entrusted to professionals.

Zuykov and partners has significant experience in handling cases on early termination of trademark protection due to non-use and provides comprehensive legal support – from assessing prospects to full dispute management and protection of your interests.