The proof of use in opposition proceedings in Spain: Experiences and tips

Back to All Thought Leadership

This 14 January marked two years since the entry into force of Decree-Law 23/2018 amending the Spanish Trademark Law 17/2001 (LM).

Among other amendments, the possibility was included for the applicant, as way of defense, to require the opponent to submit evidence of use of the opposing trademarks or to justify their lack of use, provided that the opposing trademarks have been registered for more than 5 years.

On the occasion of the second anniversary of the implementation of the requirement to provide proof of use in opposition proceedings before the Spanish Patent and Trademark Office (SPTO), we wish to share our experience and tips with you.

Date from which a trademark becomes subject to use

Depending on the type of trademark, the date on which a trademark is subject to an obligation of use is different:

  • For EU registrations (and international trademarks designating the EU) the provisions of the EU Trademark Regulation (EUTMR) apply and, consequently, the date to be taken into account is 5 years from the date of registration.

 

  • With regard to Spanish trademarks or trade names or international trademarks designating Spain, the provisions of the LM apply and, therefore, the date of 5 years starts to run from the date on which the registration became final, i.e. the day after the deadline for filing an appeal. This date will vary and can be one month and one day or two months and one day depending on whether it has been granted directly, following the rejection of an opposition, the rejection of an appeal or a contentious-administrative appeal. It is therefore very important to examine each case individually and, if in doubt, always consult us.

Time limit for requesting and providing evidence (Art 21.3 LM 20.2 & 21a RM) 

The Implementing Regulation (RM) of LM provides that evidence of use must be requested:

  1. within one month from the publication of the notice by which the opposition has been notified to the applicant, for Spanish trademarks or trade names;
  2. within four months from the date of the provisional refusal, for international trademarks designating Spain.

Once evidence has been requested, the opponent has one month to provide it.

Time limits a) and b) are, in principle, not extendable. However, the time limit available to the opponent may be extended up to a maximum of 15 calendar days in accordance with Article 32 of the Common Administrative Procedure Act. Such a request for extension must be motivated (the most frequent reason to apply for an extension is that the opponent resides outside Spain) and it is at the discretion of the Office whether or not to grant it. Both the request and the decision must be made before the expiry of the time limit and under no circumstances may a time limit that has already expired be extended.

Joint request to suspend the proceedings (Art. 26.d) LM 17/2001)

Article 26 d) LM indicates that the SPTO may suspend the opposition proceedings at the joint request of all interested parties, without the suspension in this case exceeding six months.

Although the new wording of the LM and RM does not foresee it, according to information gathered from the SPTO, in case proof of use has been requested in an opposition, a joint request for suspension will not be granted until the completion of the proof of use requirement.

This means that, if the parties wish to settle, it is advisable that the stay of proceedings is requested before the time limit for the request of proof of use is opened. Otherwise, the opponent will be forced to submit the evidence or to reach an agreement within the short period of one month.

That said, Article 26 LM states that the Office may suspend the proceedings, so it is at the discretion of the Office to accept or reject a request for suspension and when to do so.

Another important aspect to bear in mind is that the suspension must be requested jointly by all parties to the proceedings: the LM states all interested parties. So, if there is more than one opponent, all of them must sign the joint request for stay of proceedings.

Response to the opposition

As mentioned above, once the opposition has been received by the applicant, if all or some of the opposing marks are subject to obligation of use, proof that they have been used within the last 5 years may be requested and this must be done in a separate document from the response on the merits of the opposition itself. This response can be made at two points in the proceedings:

(a) at the same time as the request for proof of use or

(b) when the opponent’s proof of use is contested or rebutted, for which the RM allows a further period of one month.

The decision is a strategic one and it often makes sense to do so when the proof of use has been reviewed because the similarity or dissimilarity in the goods or services can be addressed more precisely. However, we must be aware of the risk of waiting to reply to the substance of the opposition together with the comments on the proof of use.

It may happen that mistakes are made in the calculation of the start of the obligation to use the opposing marks; in that case, if the earlier marks were not actually subject to use or the request was made with errors on the form that have not been remedied, the opportunity to reply on the merits of the opposition would be lost.

What happens if the opposition is based on trademarks that are subject to use and other trademarks that are not? What happens if proof is requested for the first ones and the opponent decides to renounce those that are subject to use and does not provide evidence? Is the opportunity to reply on the merits for those that are not under use obligation lost? No legal provision or rule foresees this situation and, as in the case mentioned above, it could happen that the applicant is not given a new time limit to file the arguments which were not filed initially. The situation is uncertain, although (despite some hesitation in the practice of the SPTO) the applicant is generally notified of this (the proof of use correctly requested has not been provided) and a new period of one month is granted to the applicant to file arguments in relation to the other grounds of opposition (or other objections).

Therefore, as said, it is essential to anticipate these events and carefully consider all the circumstances before deciding on the strategy to follow.

Type of proof

Finally, with regard to the type of acceptable evidence, the line followed by the SPTO is analogous to that followed by the EUIPO. Any document proving the use of the trademarks on the market in the relevant territory (Spain for Spanish trademarks or Spanish designations of international trademarks; and the European Union for EU trademarks) and the relevant period (the 5 years preceding the filing or priority date of the trademark under attack) is valid.

Of particular interest are invoices, product and service catalogues duly dated within the relevant period, affidavits on sales figures and evidence of internet usage during the relevant period and in the relevant territory (images of the website and/or online shop as well as documents proving usage on social media).

At CUREL SUÑOL we have extensive experience in compiling and preparing the necessary documentation in accordance with the guidelines established by current regulations, and we also offer our clients a custody service for such evidence for use in possible future proceedings.

Our team of professionals (Lawyers and Industrial Property Attorneys) is at your disposal to help and advise you on everything you need to defend your IP rights.

Author: Sílvia Oliver, IP Lawyer at CURELL SUÑOL SLP

https://curellsunol.com/en/equipo/9829/

Sign In

[login_form] Lost Password