December 2018. Tuinadvies, a small Belgian landscape design company, has seen off Chinese telecoms giant Huawei after the latter filed an opposition to its use of a logo. Huawei’s case fell apart when it failed to demonstrate that it had actually used its registered device mark in Europe. This case again shows the need to use a trademark in order for it to remain valid.
Huawei claimed there was a risk of the two trademarks being confused
Huawei had hoped to overturn Tuinadvies’ Benelux trademark application by filing an opposition based on its own European black and white device mark (without the word Huawei), which it claimed the Tuinadvies logo was too similar to.
Proof of use
Since Huawei had registered its black and white logo back in 2011, the Belgian landscape designer asked the Chinese company to prove they’d actually used it, since trademarks that haven’t been used for five or more years can be declared invalid.
Wayback Machine no proof
That’s where things went wrong for Huawei. To demonstrate that they’d used their black and white logo, they submitted prints from the Wayback Machine internet archive (Archive.org), together with news items and press releases. The Benelux Trademark Office however concluded that the Wayback prints said nothing about the products and services for which the trademark had been used. In short, it didn’t constitute proof of use and was consequently of no use.
Use with name
What’s more, the press releases only featured the logo (in colour), always in combination with the word ‘Huawei’. This could not therefore be regarded as constituting use of the black and white logo on its own.
Huawei could only show evidence it had used its logo in combination with the company name. That doesn’t constitute use of the logo on its own (right)
No use of logo
In short, then, Huawei was unable to demonstrate use of its black and white logo, so that the Benelux Office could not reach a judgement on the alleged similarity between the trademarks. Result: the Chinese were sent away empty-handed.
The key lessons that can be learned from this are as follows:
- when producing proof of use, don’t set too much store by the Wayback Machine
- if you register a logo on its own, then you must use it on its own, or you could lose the right to use it at all