Can you show use of your trademarks?

Introduction
On 1 January 2019 an amended trademark law will enter into force in Sweden. The main purpose of the modified law is to implement the new EU Trademark Directive (1) . Overall, the modified law will result in modernized and simplified trademark legislation. The amended trademark law introduces a number of changes, including stricter requirements on use in cases of opposition, infringement and invalidity proceedings. Furthermore, we will see changes regarding what may constitute a trademark. Another important change is that trademark owners will be able to explicitly stop transit and similar customs actions of infringing goods without having to prove that the infringing goods are intended for the Swedish market. The purpose of this article is to highlight the most important changes introduced by the amended trademark law.

Showing use of your trademark
A trademark is vulnerable to revocation proceedings if it has not been used for a period of five years. Despite this requirement, a trademark owner is free to file a notice of opposition, an action for infringement or a request for invalidity against a third party right on the basis of a trademark that is more than five years old without having to prove use of the trademark within the scope of such proceedings. Thus, under the current trademark law objections based on alleged non-use can only be tried in a revocation action. The threshold for filing a revocation action is generally high since an administrative procedure is only available to the extent the trademark owner does not challenge the revocation action. If the trademark owner challenges the revocation action, the case has to be decided before a court. The practical implications of the current law are that oppositions, in particular, risk being upheld despite the trademark on which the opposition is based being vulnerable to revocation. However, this will change as of 1 January 2019 as under the amended trademark law third parties may order a trademark owner to prove use of its trademark and the opposition, infringement and/or invalidity proceedings will only be upheld to the extent that the owner of the trademark can show actual use. Consequently, being able to show use of your trademarks will become essential for asserting your rights against third parties in Sweden.

Technical developments resulting in new types of trademarks
A prerequisite for protecting a trademark in Sweden is that the trademark can be represented graphically. As a result, trademark owners wanting to protect non-traditional trademarks such as sound marks have had to reproduce the trademark using words, numbers and figures. The amended trademark law replaces the requirement of graphical representation with clear and precise representation. The amended requirement in combination with technical developments will facilitate the protection of trademarks that do not consist of traditional words or figures such as sound and motion marks as these can be represented by submitting jpeg and mp3 files. The amendment also offers the possibility of completely new types of trademarks and we have already seen examples of multimedia and hologram trademarks in the register for EU trademarks. As a result, using technical developments to your advantage may help you capture the essence of your brands.  

Combating counterfeit goods more effectively
According to EU case-law, trademark owners may not prevent goods to which protected trademarks are affixed passing (transiting) through a member state in which the trademark is protected unless the goods are actually imported to that country. This is because transit is not formally considered an import. As a result, in order for the customs authority to be able to take action the trademark owners must be able to demonstrate that the intention is for the goods to be released in the member states. EU case-law has been criticised for putting an undue burden of proof on trademark owners. Under the amended Swedish trademark law, trademark owners will be able to prevent transit and similar customs related actions to the extent that the trademark owner also has the right to stop the goods according to the national law of the country of destination. It is worth noting that trademark infringement on the basis of transit or similar customs actions is excluded from criminal liability and forfeiture of property. However, other civil sanctions are applicable, which means that the goods can be destroyed. This is an unconventional but practical approach to solving problems of counterfeit goods and is an area that is being monitored closely.

Summary
An amended Swedish trademark law is a further step towards harmonizing trademark law within the EU. The changes are in line with those already put into force by the EU regulation of 14 June 2017 governing EU trademarks. The amended trademark law will offer new possibilities for trademark owners with respect to new types of trademarks and better tools for combating counterfeit goods. At the same time, showing use when asserting one’s trademarks will become more important. Irrespective of whether you are a trademark owner or alleged infringer the amended Swedish trademark law introduces important changes that should be taken into account when filing, maintaining and asserting one’s rights.

(1) Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of Member States relating to trademarks.