Deloitte Legal Webcast "Legal Update #16/2023"

Trademarks are among the most valuable assets in many companies; they are one of the decisive factors for the market success of a company. According to studies, 91% of companies consider brands to be among the most important factors influencing the success of a company; the share of trademarks in the total value of the company amounts to 50% on average. From an economic point of view, trademarks are part of a company's assets; they can be created, bought, sold, managed, and exploited. 

The application and registration of the desired trademarks is the most important first step. However, this is by no means all that is required to successfully maintain one's own trademarks in the long term as a right to prohibit conflicting third parties' trademarks and as an indication of origin for one's own economic activities. Rather, a trademark must be maintained in various ways after it is registered.

In particular, the trademark proprietor must use his trademarks in the course of trade to identify all registered goods and services; proper use and proof thereof are legal requirements for the existence of the trademark. By law, the trademark proprietor initially has a five-year grace period during which he can test his trademark without having to prove the use of his trademark. This changes after the grace period has expired. If such proof of use cannot be provided, the trademark owner cannot enforce his rights under the trademark by way of an official trademark opposition against a subsequently registered trademark, nor can he enforce them in trademark disputes before the civil courts; in addition, there is even the threat of cancellation of his trademark. A functioning and effective management of trademark proof of use is therefore essential for the protection of one's own trademark portfolio. 

Even global companies like McDonald's struggle with this; there was great astonishment when the European Union Trademark "Big Mac" was provisionally cancelled in its entirety in the European Union at the request of the Irish fast-food chain Supermac's. Although the actual use of the "Big Mac" trademark was obvious, the evidence initially submitted by McDonald's was simply not sufficient to prove a right-preserving use under trademark law. It was not until more than three years later that the decision was partially revised in the appeal instance on the basis of subsequently submitted documents proving use of the "Big Mac" trademark. 

In our webcast, we will explain how you have to use a trademark so that this use can be recognized as right-preserving. Based on practical examples, you will learn which documents are required to prove the use of your trademarks and how you can document and compile them continuously and in a structured manner in advance in order to be able to provide them "at the push of a button" at any time in the event of a conflict.

You are welcome to ask your questions for the Q&A part already during your registration. 

We look forward to your participation in our webcast!