Use Requirements of Trade Marks in the UK and Proof of Use in Opposition Proceedings

Trade marks are valuable commercial assets, but registration alone is not enough to guarantee indefinite protection. Under UK trade mark law, trade mark owners are required to make genuine use of their marks in relation to the goods and services for which they are registered. Failure to do so can leave a registration vulnerable to challenge and may significantly weaken an owner’s position during opposition proceedings before the UK Intellectual Property Office (“UKIPO”).

As trade mark disputes become increasingly evidence-heavy, understanding the rules surrounding proof of use has become essential for businesses and legal practitioners alike.

The Legal Basis for Use Requirements

The use requirement for UK trade marks is governed primarily by the Trade Marks Act 1994 (“TMA 1994”).

Section 46 of the TMA 1994 provides that a registered trade mark may be revoked if, within a continuous period of five years following registration, the mark has not been put to genuine use in the UK in relation to the goods or services for which it is registered.

Similarly, Section 6A of the TMA 1994 introduces proof of use requirements within opposition proceedings. This provision is particularly significant where an opponent relies upon an earlier trade mark registration that has been registered for more than five years.

In such circumstances, the applicant may require the opponent to prove that the earlier mark has been genuinely used during the relevant five-year period.

What Constitutes “Genuine Use”?

The courts have consistently confirmed that “genuine use” means real commercial exploitation of the mark, rather than token or artificial use designed solely to preserve registration rights.

The assessment of genuine use is qualitative rather than purely quantitative. The UKIPO and courts will consider factors such as:

• the nature of the goods or services;
• the characteristics of the relevant market;
• the frequency of use;
• the territorial extent of use;
• the commercial scale of use;
• and whether the use is commercially justified.

Even relatively modest sales may constitute genuine use if they reflect genuine commercial activity within the relevant sector.

Conversely, sporadic or minimal use may be insufficient if it appears contrived or merely defensive.

The Relevant Five-Year Period

In opposition proceedings, the relevant period depends upon the basis of the opposition.

Where the earlier trade mark registration completed its registration process more than five years before the filing date (or priority date) of the contested application, the applicant may request proof of use.

The opponent must then demonstrate genuine use during:

1. the five-year period ending on the filing or priority date of the contested application; and
2. that there are no proper reasons for non-use.

Additionally, where the earlier mark has not completed five years of registration, proof of use cannot usually be requested.

Proof of Use in Opposition Proceedings

Raising the Proof of Use Requirement

The burden does not arise automatically.

The applicant must expressly request proof of use by filing the appropriate defence and counterstatement. Once requested, the opponent bears the evidential burden of establishing genuine use.

If the opponent cannot satisfy this requirement, the opposition may fail entirely or be limited only to those goods and services for which use is proven. This has become an increasingly important tactical feature in UKIPO proceedings.

Types of Evidence Commonly Submitted

The UKIPO expects clear, objective and properly dated evidence. Typical examples include:

Sales Documentation

• invoices;
• sales summaries;
• purchase orders;
• turnover figures;
• export records.

Marketing Materials

• brochures;
• catalogues;
• advertisements;
• promotional campaigns;
• exhibition materials.

Online Evidence

• website screenshots;
• archived webpages;
• e-commerce listings;
• social media marketing;
• analytics data.

Product Packaging and Labelling

• photographs of goods;
• packaging examples;
• point-of-sale materials.

Witness Statements

Evidence is usually submitted by way of witness statement or statutory declaration from an individual with knowledge of the business and the use made of the mark.

The statement should explain:

• when the mark was used;
• how it was used;
• the goods and services involved;
• sales volumes;
• geographical scope;
• and supporting exhibits.

Partial Use and Specification Vulnerability

A major issue in modern UK trade mark practice is overbroad specifications.

If use is proven only for a limited subset of goods or services, the earlier registration may only be relied upon to that extent.

For example, a registration covering:

“Clothing, footwear and headgear”

may ultimately only survive in proceedings for:

“Sports t-shirts”

if evidence is narrowly confined.

The courts increasingly favour fair and commercially realistic specifications rather than artificially broad monopolies.

Proper Reasons for Non-Use

In limited circumstances, non-use may be excused where “proper reasons” exist.

Examples may include:

• import restrictions;
• regulatory barriers;
• force majeure events;
• or external circumstances outside the proprietor’s control.

However, commercial inconvenience or internal business decisions are generally insufficient.

The threshold is relatively high.

Strategic Considerations in Opposition Proceedings

For Opponents

Trade mark proprietors should:

• maintain organised records of trade mark use;
• preserve dated marketing materials;
• retain historical website captures;
• and regularly review specifications to ensure they reflect actual commercial use.

Businesses should also consider whether defensive registrations remain commercially justifiable.

For Applicants

Requesting proof of use can be a highly effective defensive strategy.

It may:

• narrow the scope of the opposition;
• expose weaknesses in historic registrations;
• increase evidential burdens and costs;
• or defeat the opposition entirely.

Applicants should carefully assess:

• the age of the earlier mark;
• the opponent’s apparent market presence;
• and the realism of the claimed specification.

The Increasing Importance of Evidence

Recent UKIPO practice demonstrates growing scrutiny of evidence quality.

As commerce increasingly moves online, evidential expectations are evolving. The UKIPO now expects parties to provide:

• clearer dating evidence;
• contextual website analytics;
• geographic targeting information;
• and more robust sales documentation.

AI-generated marketing content and online marketplace activity may also present future evidential complications regarding authenticity and provenance.

Conclusion

The use requirement sits at the heart of the UK trade mark system. Registration is not intended to create indefinite monopolies divorced from genuine commercial activity.

In opposition proceedings, proof of use has become one of the most strategically significant aspects of trade mark litigation before the UKIPO. Proprietors who fail to maintain proper evidence of genuine use risk losing substantial parts of their registered rights, while applicants can use proof of use requests as a powerful mechanism to challenge weak or unused registrations.

For businesses, the message is clear: maintaining comprehensive and contemporaneous records of trade mark use is no longer optional — it is essential to preserving and enforcing valuable brand rights.