Deciphering Trademark Use: A Guide for Intellectual Property Lawyers in Egypt

I. Why is it important to learn how to prove the use of trademarks?

The ownership of a trademark is based on its use. Registering a trademark in the applicant’s name is only a presumption of the ownership of the trademark which may be refuted. The earliest usage by a party prevails over the registration by another party. In some cases, the earliest trademark user does not register it, but another person could register it without using it. The former would be the user, and the latter would be the registrant. In such a scenario, the user would be entitled to bring action against the registrant to cancel this registration based on prior use.

Where a trademark is not used, such non-use could cause the cancellation of a registered trademark. In other words, the registration of a trademark confers the exclusive right to the registrant to utilize this trademark and can prevent a third party from using it. If the trademark registrant does not use their registered trademark and, at the same time, prevents an interested third party from using it, such third party may request cancelation of the registered trademark based on its non-use. That way, the third party would be able to file an application in his/ her name for the same trademark.

It is important to note that failure to prove the use of a trademark by the registrant for a consequent five years may result in conferring to any interested party the right to bring an action to cancel such registration. This is provided that such interested party has a legitimate interest and capacity. The burden of proof is on the registrant, who might be a defendant in an action of canceling their registered trademark for non-use. It is therefore essential to compile sufficient proof for trademark usage. In some jurisdictions, this statutory period may be three years only.

II. What is the evidence required to prove trademark usage?

Generally, marks are used as a trademark to brand goods or services. This, in turn, differs from a “trade name” which is used to distinguish a business or a company, and also distinct from a geographical indication. Furthermore, descriptive phrases on the packaging of products describing products, ingredients, or their purpose are all out of the scope of usage.

The use of a mark shall be in the context of trade; meaning, the goods and services branded by this mark were offered to be sold to the customers, and in return customers could obtain them. The use of a mark in an administrative process doesn’t constitute the usage of a trademark. Moreover, the mark is used in the territory of the country where an owner seeks its legal protection.

The mark is used to brand goods and services relevant to an owner’s commercial activities. In Egypt, the scope of relevant goods and services is specified in the registration certificate. This means that the registrant might lose the registration whereby the registrant uses the mark to brand goods or services that fall out of that scope because this use is NOT related to the relevant items. In the United States, applying for goods and services more than the applicant is using or intending to use will likely result in the refusal of the application.

Lastly, the use shall be in the owner’s name or by a licensed party. It is important to note that whereby a third party undertakes prior usage of a mark in question, this would not necessarily and sufficiently establish evidence in favor of a new registrant without a deed of assignment to transfer the mark to such new registrant.

III. Types of evidence of use required for goods and services.

When it comes to goods and services it is important to draw the line that distinguishes between the two in the realm of Intellectual Property Law. On the one hand, goods are tangible that have a physical form, while on the other hand, services are not tangible. Evidently, there are differences to be drawn between the types of evidence applicable as for goods which would not be applicable in the context of services.

A) Goods.
For tangibles and movables, photographs of the products or samples branded with the subject mark are sufficient and would be accepted as evidence. In addition, advertisements, participation in marketing efforts, exhibitions, and engagement in the media are demonstrations to the type of evidence that could be accepted by the courts.

B) Services.
Providing evidence for a trademark in services is quite different than with goods due to its intangible nature and the fact that there are no material products to be labeled with a trademark. Nonetheless, there are various ideas and options, such as, brochures, advertising materials, and third party testimonials, as well as document letterheads of the company which would usually include the trademark related to the offering of the services. Other documents could be invoices to the clients and service contracts. However, some of these rather sensitive documents may be subject to redaction due to confidentiality considerations. Furthermore, other types of evidence in relation to services include website analytics, which displays the design and details of the website on different a given date, client’s database analytics, and the website registration, in the name of the owner of the mark, containing an offer of the relevant services branded with the mark in question. Finally, it is recommended to issue a report by an independent expert will be helpful to illustrate and conclude these pieces of evidence.

IV. Evidence required cross-border.

On a more global scale we tend to examine evidence two-fold, namely, (a) the trademark as a globally well-known/world-renowned brand or (b) the trademark not considered a world-renowned brand.

A) Global well-known mark.

The criteria for this kind of trademark require providing supportive evidence for the mark’s use. The elements of this criteria were identified by the permanent committee of trademarks, industrial designs, and geographical indications in World Intellectual Property Organization (“WIPO”). These elements are as follows:

(1) The duration of the use of the trademark.
(2) The geographical range of the use of the trademark.
(3) The multiple registrations of the same mark in many countries worldwide, the time since the registration date, and the geographical scope of these registrations.
(4) The financial value of the trademark.
(5) Any activities for marketing or advertising for the goods or services branded with this mark, for example, the contribution to local and international exhibitions.
(6) Any disputes about citations contradicting other trademarks, and these disputes were settled in favor of the subject mark.
(7) Any judicial proceedings before the courts for recognizing the well-known trademark statutes of the subject mark.

It is not necessary to provide all these types of evidence collectively as they are guiding elements meant to support the competent authority – on a case-by-case basis – to identify how the mark in question is a globally well-known trademark. It is sufficient for the owner thereof to provide one or more types of such evidence mentioned hereinabove. Nevertheless, it is worth reiterating that some well-known trademarks might lose their registrations based on their non-use for five years (Egypt) or three (USA), depending on the jurisdiction in question.

B) Not a world-renowned mark.

This type of mark can be internationally registered according to the Madrid Protocol but not as a world-renowned mark. This protocol allows the mark owner to file one application to seek trademark protection in multiple member states. This shall be made through the international department within the government trademark office in the respective country of origin. The mark owner shall specify the designated countries they are seeking. Some countries require a first affidavit of the continued use in commerce. This affidavit should be resubmitted every ten years. For instance, the United States is one of the countries which require an affidavit. However, in Egypt, such affidavit is not required.

Moreover, in Egypt, usage can be proven by presenting a verified date of first use, a license agreement concluded between the mark owner and a licensee, or an agency agreement allowing the relevant goods and services to be offered to consumers in the designated country. The owner may be able to present market research or a report from an independent expert reflecting the market shares accepted as supportive evidence of such use. Additionally, the income figures, advertisements, and mentions in the media are also considered valuable pieces of evidence.

Alternatively, or in addition to the above, data extracted from a government authority handling marketing authorization or data removed from the customs authority’s database are also sufficient types of evidence for offering goods to consumers. However, obtaining this kind of evidence requires authorization from the court.

V. Evidence required for digital goods online and in virtual environments.

In the country where the owner seeks protection, internet users shall be able to access the website.

Usually, the marketplace allows for two options:

The first option is to register as a seller who owns a registered trademark, allowing the seller to use his exclusive rights to exploit his own trademark and prevent third parties from using his registered mark on the online marketplace. The second option is to register as a seller without a registered trademark. This could allow the seller to accumulate the analytic data which would in turn prove the use of the mark in question. This, however, would not allow the seller to prevent third parties from using the same mark due to the lack of exclusive rights over the trademark.

In all cases, as long as the seller offers goods under their own brand, these two options would allow the seller to accumulate analytic data to prove the use of the trademark in addition to the accompanied invoices of verified purchases and screenshots of the products on the marketplace.

Proving the use of a trademark in the virtual reality and metaverse:

The trademarks for virtual goods, services, and digital products could be registered in the United States with the intent to use the track.

This track allows the applicant to file a trademark application, but it is not necessary to provide evidence of use of the mark at the filing date. The benefit of this track is that it allows the applicant to be the first to fulfill the conditions of a valid application. Otherwise, if the applicant waits until active use, another earlier application by a third party will result in the loss of the availability of the mark being registered.

The US Patents Office examines the intent to use the application and requests the applicant to provide evidence of its active use during the process. The applicant can submit multiple requests for an extension period every six months up to three years and a half from the application date. The US Patents office finalize the registration upon examining the evidence of the active commercial use.

In contrast, in Egypt, the IP law does not recognize such a practice; instead, it follows the European approach, which allows the registration of a trademark without evidencing the use at the time of filing the application giving the registrant five years to use the trademark and accumulate the evidence of its usage.

The real challenge in the realm of IP law is met with the exponentially advancing technology, especially with Artificial Intelligence at the forefront of technological advancement. For example, virtual realities, metaverse, NFT, Blockchain, Web 3.0, and crypto present IP lawyers with new gaps to fill.

• Enforcing the IP law through governmental authorities contradict the principles of these realities since enforcement by nature contradicts the fundamental principles upon which these realities are established.
• They are established on decentralization principles, like a wild planet without a government.
• They are based on the freedom to move your digital assets from one platform to another without governmental intervention or involvement.
• The protection conferred from registration in a country will not automatically be designated to another country, at least in our actual universe. However, some big companies started registering trademarks for the metaverse, particularly for organizing events, for educational purposes, music parties, and concerts, etc.

This further illustrated in Egypt; virtual reality, metaverse, non-fungible tokens (NFTs), Web 3.0, and cryptocurrencies are not strongly regulated. The law naturally lags behind advancements of technology. Therefore, it is a good idea to start accumulating evidence for E-commerce the same as the real world. For example, an owner of a mark may start the registration process, to secure the presumption of use over the mark in favor of the owner. Advertisement materials proving the use of a trademark could be supported by analytics from consumers’ databases or displaying the subject mark on virtual services or digital products on the launch screen. It may be instrumental in illustrating this evidence through an independent expert’s opinion or a technical report, as previously mentioned above. This is due to the new virtual realities which are challenging IP law practitioners. IP lawyers are playing and will continue to play an important role in closing.

VI. Conclusion and advice

Generally, trademarks should be used by the owner to distinguish goods or services, not a business or a company. It should be used to brand the relevant goods and services in the context of the trade in the territory of the country from which the owner seeks protection.

As we have seen, some examples of the various types of evidence might apply in specific contexts but not in other contexts. For example, the photos of the products, samples of the products, and the data extracted from customs authority are limited concerning goods but do not apply to services.

The types of evidence related to a renowned mark where there is a geographical scope of use differ from those of a non-renowned mark which, in turn, lacks such a geographical scope of service and registration.

Website analytics and displaying the trademark on the launch screens of websites and applications are applicable in relation to digital products, virtual realities, and E-commerce. Still, these types of evidence are not appropriate in the brick-and-mortar market.

The challenges emerging from the ever-changing technology requires IP lawyers to ask themselves the relevant questions. Some of these questions might be whether using a trademark in the real world could be prior in the virtual realities and vice versa. What impact would this have on the economic values of trademarks? Can these also be transferred between the realities? How could the territorial protection of trademarks be extended to virtual realities?

It is important as lawyers and owners or potential owners to observe the best practices of the IP authorities in the United States, the European Union Intellectual Property Office, and the IPO in the United Kingdom. They are facing such trademark applications which are currently being received and reviewed. Finally, it we should closely observe whether WIPO will recognize new classifications for virtual goods, services and digital products in virtual realities or whether WIPO will amend the current NICE Classification.

Mostafa Mohamed Ahmed

Senior Associate at I&D

By ‎Ibrachy & Dermarkar, Egypt, a Transatlantic Law International Affiliated Firm. 

For further information or for any assistance please contact egypt@transatlanticlaw.com

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