Why, When, and How to Establish Proof of Trademark Use—and Is It Mandatory?

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Depending on the jurisdiction, brand owners may need to provide trademark proof of use to establish rights, maintain registrations, enforce trademarks, and avoid cancellations during the lifecycle of a mark. However, providing compliant evidence of trademark use is rarely straightforward, as Marie Farges, Questel’s Client Solutions Specialist Manager, explains.

While the formalities may differ by jurisdiction, the need to establish proof of trademark use is relatively constant across trademark registries, since rights are generally tied to the actual use of a mark in commerce. The requirement ensures that trademarks are only granted and maintained for marks that are actively being used in the marketplace, preventing "trademark squatting" (where individuals register marks without intention of using them) and keeping the register clear for others. However, the point at which brand owners must supply proof of trademark use and the types of evidence that are accepted can vary considerably across registries.

Why Do I Need to Establish Proof of Trademark Use?

Depending on the jurisdiction, you may need to supply trademark proof of use to:

Establish rights
In countries with a “first-to-use" system, such as the United States, use of the mark in commerce is the primary way to acquire trademark rights. Simply registering a trademark doesn't establish full rights unless you can show actual use in the relevant jurisdiction.
Maintain registrations
After a trademark is registered, some jurisdictions require periodic proof of continued use (e.g., filing a Declaration of Use in the U.S.) to keep the registration active.
Enforce rights
When enforcing your trademark rights, proof of use is key in demonstrating your good standing and the opposability of your mark.
Avoid cancellations
Failure to use a trademark for a certain period (often 3 to 5 years, depending on the jurisdiction) may lead to cancellation of the registration. Third parties can also petition to cancel your trademark if they believe it's not being used.

When Do You Need to Provide Proof of Trademark Use?

While proving use would be needed in cases of litigation, not all countries require trademark owners to prove usage to establish or maintain rights. Those that do may require brand owners to provide such evidence:

During registration: In "first-to-use" countries like the U.S., you must file a statement of use or provide evidence of use before the trademark is fully registered.
Post-registration: Some countries require trademark holders to periodically submit proof of use (e.g., declarations or specimens of use) after a certain number of years (such as five or 10 years).
Intent-to-use applications: In some cases, you can file an "intent-to-use" application, where you plan to use the mark in the future. However, you will eventually have to submit proof of actual use for the mark to be registered or maintained.

Is it Mandatory to Provide Proof of Trademark Use?

Countries where proof of use is mandatory at specific points in the lifecycle of a trademark right include:

United States
After the initial registration, between the 5th and 6th years, trademark owners must file a Declaration of Use (or non-use with valid reasons) and provide proof of use (e.g., specimens of the mark in commerce). Renewal is also required every 10 years with proof of use.
Philippines
In the Philippines, proof of use is required within three and five years after the date of application, as well as one year after renewal
Eswatini
In Eswatini, proof of use is also required at the time of renewal.

 In addition, several countries require the submission of a Declaration of Actual Use (DAU) or similar confirmations of use at specific intervals during the trademark lifecycle. For example, countries in Asia, such as Indonesia, Thailand, and Vietnam, and countries in South America, such as Mexico, Brazil, Argentina, Colombia, and Chile.

These requirements are typically aimed at ensuring the trademark is being actively used in commerce, while not necessarily requiring the provision of supporting evidence.

How to Establish Proof of Trademark Use

A lack of harmonization on the trigger and timings for establishing proof of trademark use across jurisdictions is only part of the challenge facing trademark professionals. Different territories also use different terminology, accept different forms of ‘evidence’, and have different requirements for how such use should be supplied. The difference between a ‘declaration of use’ and ‘affidavit’ is just one example of where confusion can commonly occur.

What is the difference Between a ‘Declaration of use’ and ‘Affidavit’?

 The terms "affidavit" and "declaration of use" are often used interchangeably in the context of trademark law, but some countries officially use the term "affidavit" while others prefer "declaration of use" or similar terms. The main distinction between the two terms is that an affidavit typically requires a sworn statement made under oath, whereas a declaration may not require an oath but still serves as a formal statement.

Countries that officially use the term "affidavit" include the United States, India, and South Africa.

Common situations where an affidavit is requested include:

Declaration of Use (Affidavit of Use):
This is used to confirm that the trademark is still in use in commerce.
In some countries, owners must file this affidavit at certain intervals after registration to avoid losing their trademark rights.
Affidavit of Excusable Non-Use:
If the trademark is not in use, an affidavit may need to be filed to explain the reason for non-use (such as business disruption, market conditions, etc.) and to avoid cancellation.
Affidavit of Continued Use:
This is a statement confirming the trademark’s continued use in commerce, typically submitted alongside a renewal application.

Given the differences in regulations, terminology, and requirements for submitting proof of trademark use worldwide, tracking, capturing, and preparing such evidence typically represents a time-consuming and administrative challenge for trademark professionals. Fortunately, this is an area where artificial intelligence (AI) solutions can assist.

We're excited to introduce the industry's first AI platform for capturing evidence of use. It has been designed to efficiently extract and classify documents that establish proof of use for brands in specific jurisdictions to ensure you have evidence at your fingertips when seeking to establish, maintain, and enforce rights in your markets worldwide. But that’s not all. This unique AI copilot will also provide you with timely reminders of the legislative and regulatory provisions of each case and assess the relative strength of rights in each specific territory to predict the likely outcome of a legal dispute.

To discover more about the AI copilot for capturing proof of trademark use, contact our team to request a demo.

Marie Farges

is Client Solutions Specialist Manager for Trademark & Design Solutions at Questel.