Proof of use: A valuable guide by the Spanish Patent and Trademark Office

By María Luisa Santa María.

Proof of use: A valuable guide by the Spanish Patent and Trademark Office

In March, 2021, the Spanish Patent and Trademark Office issued its Informative Guide on Evidence of Use. These guidelines consist in a compilation of some principles already recognized by the Argentine courts, but also provide a systematized approach to other aspects that are applicable to the Argentine trademark system.

Regulatory background

The enactment of the Royal Legislative Decree 23/2018 resulted in the incorporation to the Spanish legal system of the Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 on the approximation of laws of the Member States relating to trademarks, with particular focus on procedural matters. Consequently, Section 21. 3) of the Spanish Trademark Act now states that, at the request of the applicant, the owner of an opposing mark has to provide evidence of use of his mark within the five years prior to the filing, or to the priority date, of the opposed application. In lack of such evidence, the opposition is rejected.

General Principles

The Informative Guide states that the opponent must prove four factors, namely, place, time, scope and nature of use of the opposing mark with respect to the goods and/or services covered by its registration. The analysis of the last two factors – scope and nature – is particularly useful.

Scope of Use

According to the Informative Guide, the opponent must prove the size of use of his mark. For this purpose, certain aspects will be taken into account, such as, trade volume, frequency of use, duration of use and the intensity of use of the opposing mark. The particulars of each case will be considered, but acceptable use of the mark must be shown.

Nature of Use

The opponent must provide evidence showing that the mark has been used in the market as registered and for the same goods and/or services. To this end, the evidence submitted must reveal the way in which the mark was used in commerce.

The following are listed amongst the most frequently used types of evidence:

• Photographies showing the date and characteristics of use of the mark.
• Invoices containing data, such as, the date and place of issuance, invoiced amount and/or cross references of the mark with catalogues or product lists.
• Catalogues including information on their distribution with cross-references to photographies, invoices, etc. 
• Advertising, magazines, newspapers, leaflets indicating the date and place of publication, territorial scope of distribution, number of inserts, number of readers, information on advertising expenses.
• Fairs: Information on the place and date of the fair, as well as on the exhibition of the mark.
• Packaging showing the date of use and the use of the mark in connection with the goods of interest.
• Market research reports and surveys
• Annual reports: sales and distribution reports.
• Price lists.
• On-line evidence: trademark owner’s website, social media, etc., that show date of publication.
• Sworn declarations issued by the trademark owner, trade associations, consumer organizations and manufacturing and industry associations, etc.

It is worth mentioning that the Spanish Trademark Law expressly recognizes the provisions of Article 5, Section C 2) of the Paris Convention for the Protection of Industrial Property by stating that use of a mark in a form differing in elements that do not alter its distinctive character in the form in which it was registered, will not cause the invalidation of the registration. Therefore, the Informative Guide states that the scope of analysis must focus on whether the amendment introduced to the mark make the same overall impression on the average consumer than the original registration.

In the event that the mark is in use exclusively for some of the goods and/or services covered by the registration, only those goods and/or services on which the mark is actually used will be taken into account for purposes of deciding the admissibility of the opposition.

Lack of use of the mark for reasons beyond the trademark owner’s control

The opponent can show that there have been justifiable reasons for the lack of use of his mark. For this purpose, such valid reasons must meet the following requirements:

• Have direct relationship with the mark
• Turn the use of the mark into impossible or unreasonable
• Must not depend on the trademark owner’s will

The following are listed amongst other examples of justifiable causes for lack of use of a mark:

• Import restrictions and other official requirements imposed on the goods and/or services for which the mark is registered.
• Ban on sales imposed by the government due to health or national security reasons.
• State monopolies.
• Force majeure reasons regulated under the Spanish Civil Code.

In addition, the following are mentioned as unjustifiable reasons for lack of use of a mark:

• Financial or economic difficulties faced by the company as a result of an economic recession, its own financial problems, bankruptcy or reorganization proceedings, or standstill of activities.
• Period of time required to launch a product or service.
• The existence of negotiations between the trademark owner and a third party for the assignment of the mark.
• The filing of a court action seeking the cancellation of the mark as a result of which the trademark owner decided to stop using it.

Final comments

Pursuant to the Director of the Spanish Patent and Trademark Office, approximately 27% of the opposition proceedings where a request for proof of use was filed resulted in the granting of the application due to lack of evidence of use of the opposing mark. 

Even though the benefits of the proof of use proceeding is beyond of the scope of this article, its effectiveness is evident. The applicant does not need to request the cancellation of the opposing mark on grounds of non-use in order to obtain registration for his application, thus avoiding the additional costs derived from such course of action. In fact, the applicant has a faster and less costly tool within the same application proceeding that allows him to request the opponent to provide evidence of use of the opposing mark, as a prerequisite for the admissibility of the opposition.  Perhaps a similar proceeding could be introduced to the Argentine trademark system in the future.

For further information please contact: mlsantamaria@ojambf.com

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