As a business owner, you might be familiar with seasonal products—items that only appear during certain times of the year, such as limited-edition summer drinks, Halloween spooky specials or festive winter treats. But did you know that having a seasonal product can complicate the maintenance of your trade mark. It’s crucial to understand the rules around genuine trade mark use, without careful management you could risk losing your trade mark rights.
When it comes to trade mark use for seasonal products, both the UK and the EU have aligned positions. In both jurisdictions, trade marks must demonstrate genuine use within a continuous five-year period to remain valid. However, for businesses offering seasonal or limited-edition products, the law recognises that continuous use isn’t always possible. As long as you can prove genuine, commercial use during the relevant seasons, your trade mark can remain protected, whether you operate in the UK or across the EU
Let’s explore the challenges of maintaining a seasonal trade mark and what you can do to ensure your business stays protected.
Why Genuine Use Matters for Your Trade Mark
In the EU, trade marks can be cancelled if they aren’t used for a continuous period of five years. The law requires that your trade mark be used in connection with the goods or services it’s registered for, and this use must be genuine—not just token use to keep the registration alive.
But what does “genuine use” mean, especially when your product isn’t available all year round? This is where things can get tricky for businesses that deal in seasonal goods or services.
What Is Considered Genuine Use?
Genuine use means using your trade mark in a real, commercial way that aligns with its primary purpose: distinguishing the origin of your goods or services. The European Union Intellectual Property Office (EUIPO) and the Court of Justice of the European Union (CJEU) have made it clear that token use—using the mark only to maintain registration—doesn’t count.
However, the rules around genuine use aren’t rigid. They take into account the nature of the goods, the characteristics of the market, and the frequency of use. For instance, a business that only sells its products during the summer months doesn’t need to prove year-round use to maintain its trade mark.
Seasonal Products and the Challenge of Extent of Use
For businesses offering seasonal or limited-edition products, maintaining the “extent of use” of your trade mark can be a concern. EUIPO guidelines highlight that trade marks must be used seriously and commercially, but this doesn’t necessarily mean the products must be available all the time. Seasonal products can still meet the requirements for genuine use, even if they’re only sold for part of the year, as long as you can prove authentic use during that period.
The key is demonstrating that, despite the limited availability, you’ve made a genuine effort to capture a share of the market. For example, if you sell tropical fruit-flavoured ice cream exclusively during the summer, you need to show that you’ve been active in promoting and selling that product during the season.
Factors like sales volume and frequency of use play a role here. Even if the sales volume is low, frequent use during the relevant period can be enough to satisfy the requirement of genuine use.
How to Protect Your Seasonal Trade Mark
If your business deals in seasonal products, there are steps you can take to ensure your trademark remains secure. Here are some best practices:
- Keep Your Trade Mark Visible: Even if your product isn’t available all year, keep it visible. This can be done through your website or social media channels, where you maintain information about the product’s availability and seasonal nature.
- Record Sales and Marketing Efforts: Keeping accurate records is crucial. Store copies of invoices, marketing materials, and distribution agreements. You should also keep track of sales, including exports to other regions where your product might be in demand during the off-season.
- Identify the Seasonal Nature of Your Product: Make it clear that your product is only available during certain times of the year. For example, if you produce limited-edition chocolates that aren’t sold in the summer to maintain quality, make sure this information is well-communicated in your marketing materials.
- Document Use by Third Parties: If other companies are authorised to sell your seasonal product under licence, keep detailed records of these agreements. This can also serve as evidence of genuine use in case your trademark’s validity is questioned.
The Law: What You Need to Know
Under EU law, if you don’t use your trade mark for a continuous period of five years, it becomes vulnerable to cancellation. However, the courts understand that some products, like seasonal or limited-edition items, may not be on the market year-round. The CJEU has ruled that trade marks can still meet the criteria for genuine use as long as there’s authentic use during the relevant times, even if it’s not continuous.
Additionally, EUIPO guidelines recognise that market conditions vary by industry. For example, a company selling festival merchandise or holiday-themed goods doesn’t need to worry about proving year-round use if it can show that the product was actively marketed and sold during the relevant season.
Special Considerations for Seasonal Trade Marks
One important point to remember is that while seasonal products can be protected, you need to take extra care in documenting use. Simply putting the product on the market for a few weeks or months isn’t enough—you need to show that your use of the trade mark was commercially serious. The amount of evidence you provide will depend on factors such as the product’s market, the nature of your industry, and the commercial volume of sales.
Stay Protected with Proper Planning
Seasonal trade marks come with their own set of challenges, but with careful planning and proper documentation, you can protect your brand. If you’re concerned about maintaining your trade mark or are unsure about how to prove genuine use, it’s a good idea to seek expert advice. At National Business Register, we can help you navigate the complexities of EU trade mark law, ensuring your seasonal or limited-edition products remain secure.
Ready to Safeguard Your Seasonal Trade Mark?
Don’t let your hard-earned trademark become vulnerable. Whether you’re selling products that only appear for part of the year or have limited-edition offerings, we can offer expert guidance on trade mark protection, helping businesses register and enforce their trade marks, whether for year-round or seasonal products. With our comprehensive services, you can ensure your intellectual property is safeguarded, keeping your brand strong and legally secure. Contact us today by calling 0800 069 9090 or emailing Info@nbrg.co.uk.
