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As we recently informed you, the reform of the Spanish Trademark Act 17/2001, which came into force on 14 January 2019, introduces an essential new feature in opposition proceedings against Spanish trademark and trade name applications and international trademarks designating Spain, since the applicant may request as a way of defence that the opponent submits evidence of the genuine use of the earlier right claimed (trademark or trade name) if the latter has been registered for more than five years.

We are familiar with this requirement because it applies in opposition proceedings before EUIPO. However, we must point out that the registration procedure in Spain follows the “principle of single decision”, which means that the oppositions, observations of third parties and objections on absolute grounds are all communicated in a single office action to the applicant and the decision of the Spanish Patent and Trademark Office (SPTO) deals with all of them in the same resolution. The situation might be complex since different oppositions may present different circumstances (prior mark with more than five years of which the submission of evidence of use may be requested; prior mark being suspended because it is the object of cancellation proceedings; prior mark being still pending registration; willingness to negotiate, etc.).

Concerning the evidence to be submitted, it should refer to all the goods and/or services for which the earlier right is registered, or on the basis of which it is claimed in the opposition. If no use is proven, or the use only refers to part of the goods or services in which the opposition is based, the latter will be rejected entirely or in part.

The European case law establishes that genuine use is a real and effective use in the market, which is not simulated or merely internal or token use. It must correspond to the essential function of the trademark or trade name i.e. identifying the commercial source of the goods or services. In order to assess the consistency of the evidence the SPTO will take into account the nature of the goods or services and the characteristics of the field of activity concerned and also whether the use is extended and constant. Concerning its magnitude, a sufficient use will be a use of the sign which allows keeping or creating a market share for the corresponding goods or services.

The evidence must show the place, time, extent and nature of the use of the sign. Thanks to the long-experienced trademark opposition proceedings in the European Union and the relevant case-law, we contend that the required elements of evidence will be samples and invoices, packaging, labels, price lists, catalogues, brochures, photographs, press articles, affidavits, adverts and publicity. Documents provided by third parties other than the owner of the mark will be very useful since they will be considered pieces of independent concrete evidence. All in all, it must be proven that the products or services are offered for sale and put into the market, and that the brochures are circulated and lead to purchase.

The fact that the use of a trademark or trade name is well-known and even the reputation of a trademark does not exempt its owner from providing evidence showing that it has been used in the course of trade. The submission of supporting evidence is equally required. Therefore, it is convenient to assemble a dossier for each registered trademark or trade name, which should be periodically updated with the relevant pieces of evidence reflecting its use in the last five years.

CURELL SUÑOL offers all their clients a record-keeping and maintenance service of evidence of use and/or of reputation of their registered trademarks and trade names as a complement to the opposition watch service.

The effective entry into force of the provisions related to the submission of evidence of use is conditional to the Spanish government previously passing and enacting the required implementing regulation. As soon as the new implementing regulation is approved, we will inform you.

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