Notes regarding the evidence of use/first use applying the first to use principle
The first to use principle is a concept in intellectual property law that gives preference to the party that first uses a particular trademark or service mark in commerce. In addition, the requirement to use appears in both first to use principle as well as first to file principle. Learning the necessity to prove use/first use in Intellectual Property matter is extremely important and should be noted accordingly.
Proof of first to use
The “first to use” principle is a concept in intellectual property law that gives preference to the party that first uses a particular trademark or service mark in commerce. In contrast, some countries follow the “first to file” principle, where the party that first files a trademark application with the relevant authorities is given preference.
In the context of the first to use principle, it is often necessary for a party to prove that they were the first to use a particular mark in commerce. This can be done by providing evidence of use, such as sales records, invoices, advertising materials, and other documentation showing that the mark has been used in connection with the sale or provision of goods or services.
The reason why proof of use is important in the first to use principle is that it helps to establish priority and ownership of the mark. If a party can show that they were the first to use a particular mark in commerce, they may have a stronger claim to the mark than a later user.
Trademark practitioners must exercise extreme caution when submitting evidence to demonstrate usage or the declaration of first use. Such evidence must be filed without modification or obfuscation, lest it be identified as manufactured, fraud during subsequent litigation.
Proof of use
Besides from the requirement to prove first of use, proving use can help to establish the distinctiveness and strength of the mark, which may be relevant in determining whether the mark is entitled to protection under trademark law.
In some jurisdictions, such as the United States, a party can obtain common law trademark rights through use of a mark, even if they have not registered the mark with the relevant authorities. However, to assert these common law rights and prevent others from using a similar mark, the party may need to provide evidence of use and establish that the mark has acquired secondary meaning or distinctiveness in the marketplace.
After registration, the trademark owner might have to provide proof of use of such trademark in commerce. This is to avoid and prevent the situation of trademark holding, meaning some third parties registering a trademark with no intention to use, typically the trademark that is associated with the brand of a famous company, like Coca Cola or Gucci.
They registers it not for use but to blackmail the foreign company when they intends to open a branch in their country, thus creating unhealthy investment environment as well as business environment.
This proof of use typically takes the form of a sworn statement, called a declaration of use or statement of use, that includes evidence such as sales records, invoices, or advertising materials.
***Other Articles***
– You could check Required documents of filing trademark in USA here.
– You could see What needs to be done after registering a trademark in US? here.
– You could visit here to see What is use in commerce of filing trademark in USA.
– You could also check here to see Procedure of Trademark in USA.
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