Proof of Use Requests in France and at the EUIPO: How to Respond

What is a proof of use request, and when can it be made?

When you oppose a trademark application on the basis of an earlier mark, the applicant can turn the tables: if your earlier mark is old enough, they can require you to prove that you have actually used it. Fail to prove genuine use, and the earlier mark drops out of the comparison — for the goods and services where use is not shown, your opposition is judged as if the mark did not exist for them.

The trigger is the five-year rule. The applicant can demand proof of use where the earlier mark had been registered for more than five years at the relevant date of the contested application. The request is optional and must be made expressly — if the applicant does not ask, you do not have to prove anything. This is the practical reason we tell US clients that opposing on a portfolio’s oldest, most senior registration is not automatically the safest play: the older the mark, the more exposed it is to a use challenge.

Proof of use lives inside the ordinary opposition procedures described at opposition before the INPI and opposition before the EUIPO. This page is about what to do once the request lands. The same mechanism also drives a standalone revocation for non-use action, where a third party attacks an unused mark directly rather than in defense.

Proof of use deadlines: how long do you have to respond?

This is where US counsel most often get caught. There is no discovery, no testimony period, and no routine extension. The evidence file you assemble and file by the deadline is the case.

• Before the INPI (France). Once the INPI notifies the proof-of-use request, you have one month to file your evidence and argument. That deadline is not extendable unilaterally. The only way to buy time is a joint suspension — four months at a time, up to a maximum of twelve months — which requires the applicant’s consent, and which does not reset your deadline (you keep only the time that was left before the suspension). The lesson from practice: if the client’s documents are not ready, request the suspension immediately, not in the last week.
• Before the EUIPO. Once proof of use is validly requested, the Office invites the opponent to file it and sets a period of two months running from that invitation. Unlike the French deadline, this period is extendable on request. The five-year window against which use is measured runs back from the filing date — or priority date — of the contested EU application.

A further trap in French practice: no new evidence can be added on appeal. Whatever you can prove, you prove now — it is, quite literally, now or never.

What do you have to prove? The four elements of genuine use

The standard is genuine use — real commercial exploitation, not token or internal use — and it breaks down into four elements you must cover for the goods and services relied on:

Element	What it means
Place	Use in France (for a French mark) or in the EU (for an EU mark). For an EU mark, national borders are disregarded, so use in a single member state can suffice; and affixing the mark to goods or their packaging in the EU solely for export also counts as use.
Time	Use during the five-year period preceding the relevant date of the contested application.
Extent	Enough volume to be genuine — turnover, sales quantities, market presence.
Nature	Use for the registered goods and services, and in the form as registered (minor variants that do not alter distinctive character are tolerated).

What evidence proves genuine use (and what falls short)?

The evidence that carries a proof-of-use file is primary, dated, and documentary:

• invoices showing sales under the mark, with dates, places and amounts;
• purchase orders — probative even where the matching final invoice omits the mark;
• dated catalogues and price lists;
• product photographs, packaging and labels showing the mark in use.

Secondary material supports but rarely stands alone: annual reports and financial statements, dated website extracts (archive.org helps prove the date), dated and geolocated social-media or trade-fair evidence, press coverage, advertising. A sworn declaration from a company officer is useful — but in France, a declaration carries little weight unless corroborated by documents. Undated, unlocated photographs are close to worthless on their own.

Two practical points repay attention. First, map every registered good and service to the evidence that proves it; a gap does not cancel your mark, but it narrows your opposition to what you actually proved. Second, the examiners reward clarity — a summary table tying invoices and exhibits to each product beats a data dump of hundreds of unguided pages, especially where the product is technical or modular.

Section 8 declarations vs. proof of use in Europe

This is the single most common misunderstanding among US clients, and it runs in both directions.

In the United States, keeping a registration alive requires you to file, on a schedule, an affirmative declaration that the mark is in use: the Section 8 declaration (15 U.S.C. §1058) between the fifth and sixth year after registration and at each renewal, and the parallel Section 71 affidavit (15 U.S.C. §1141k) for US extensions of international registrations. Miss the filing and the registration is cancelled by the USPTO, whether or not anyone complains. Use is policed proactively, by the registry, against every registrant.

France and the EU work the opposite way. There is no periodic use declaration and nothing to file to keep a registration alive on the use front — renewal every ten years is a separate, purely administrative step that says nothing about use. Instead, both systems grant a five-year grace period after registration during which the mark cannot be challenged for non-use at all. After that, the mark becomes vulnerable — but only if someone raises it, by demanding proof of use in an opposition (as here) or by bringing a revocation for non-use action. Use is policed reactively, by opponents and defendants, not by the office.

The consequences for a US brand owner in Europe are concrete:

• No filing calendar to protect you. Because nothing prompts a French or EU owner to document use every five to six years, the evidence often is not organized when a proof-of-use request finally forces the issue. Build the file before you need it.
• A US §8 declaration proves nothing in Europe. It is a statement, not the dated invoices and volumes the INPI and EUIPO want to see.
• The five-year clock is a shield, then a liability. Inside the grace period the mark is unassailable for non-use; outside it, an unused mark is a weak sword in opposition and an open target for revocation.

How we handle proof of use for US clients

Responding well is part evidence-gathering, part storytelling for a busy examiner: collect the primary documents, build the product-by-product coverage table, prepare a corroborated declaration, translate the key material, and file early to avoid a last-minute technical failure. Where the file has genuine gaps, the honest move is to say so and weigh the options — request a joint suspension to gather more, limit the opposition to the proven goods, or fold proof of use into a broader amicable settlement. If you are the one making the request — defending against an opposition built on an old mark — the analysis runs in reverse and is covered at responding to a trademark opposition. See our results in opposition and non-use matters on the results page.

Just received a proof-of-use request, or weighing whether to demand one? Contact us — the deadline is short, and we can assess the evidence and the timeline within days, in English.