Your trade mark has been opposed: demand proof of use

The case, in five lines

What is brought

A request that the earlier mark's owner prove genuine use, made when answering the suspension, under article 21.3 of the Spanish Trade Mark Act and article 21 bis of its Regulation.

Before which court

The OEPM (the Spanish Patent and Trade Mark Office), which decides the opposition; its decision is later reviewed through administrative channels and then before the contencioso-administrativo courts, not before the Commercial Section of the Tribunal de Instancia (the first-instance court).

Deadline

The request must be made within the term the Regulation sets for answering the suspension, and only if the earlier mark had been registered for at least five years on the filing or priority date of yours. The opponent then has one month to produce the evidence.

Who can bring it

The applicant for the later mark, who is the one who asks for the evidence. Filing an opposition, by contrast, is open only to the owners and licensees listed in article 19.1 of the Trade Mark Act.

Financial risk

The financial exposure is limited because the OEPM does not award costs, but if the opponent does prove use your mark may be refused wholly or partly and the money spent on packaging and advertising is lost.

Proof of use can only be demanded from marks that are five years old

Article 21.3 of the Trade Mark Act makes the request conditional on something that is checked before anything else: on the filing or priority date of your application, the opponent's mark had to have been registered for at least five years. If the opponent registered three years ago, there is no proof of use to demand and the opposition will be examined purely on the merits, comparing signs and goods.

Nor does the clock start where one would expect. Article 39.2 provides that the five year period begins on the day the registration of the mark becomes final, a date recorded in the Trade Mark Register that may fall well after the opponent's own application. That is why the first thing done is to obtain the registry certificate for the earlier mark and check that date, not the one stated in the notice of opposition.

Where the earlier mark is an EU trade mark, article 21.6 extends the same mechanism, and refers to article 18 of Regulation (EU) 2017/1001 in order to determine genuine use. The strategy is identical: the age of the earlier registration is checked, the evidence is demanded, and the argument then turns on whether what was produced shows real use in the relevant territory.

The request goes in a separate document, express and unconditional, or it is rejected

Article 21 bis.1 of the Regulation approved by Royal Decree 687/2002 is blunt: the request for proof of use is admissible only if it is made formally and expressly in a separate document and unconditionally, within the term laid down for answering the suspension. Slipping it into a paragraph of the submissions will not do, nor will framing it conditionally, along the lines of should the examiner find similarity. That formal defect costs you the most effective weapon in the file.

The same article, in paragraph 6, clarifies that the request may be filed at the same time as the submissions answering the suspension. That is how it is always done: one set of submissions attacking the comparison of signs and goods, and alongside it, separately, the document demanding the evidence. Relying on proof of use alone leaves the file defenceless if the OEPM concludes that the opponent was in fact using its mark.

The burden falls on the opponent, and one stray invoice is not enough

Once the evidence is demanded, article 21 bis.2 requires the OEPM to pass the request to the opponent so that it produces the evidence within one month. If in that month it produces nothing, if what it produces is insufficient, or if it fails to establish proper reasons for non use, the opposition is dismissed. The procedural positions reverse completely: the attacker now has to show that its mark is alive.

The content is prescribed. Paragraph 3 requires indications as to the place, time, extent and nature of the use in relation to the goods or services on which the opposition is based, and paragraph 4 lists the admissible items: invoices, catalogues, advertisements, packaging, labels, photographs and relevant written statements. Evidence with no dates, no figures or no link to the goods relied on does not cover those four coordinates.

There is a further front that is rarely exploited. Paragraph 5 requires that, if the evidence is not drafted in Spanish, the opponent file at the same time a translation of the relevant parts. A bundle of untranslated foreign invoices is evidence that can be attacked in the submissions granted by paragraph 7, also one month, running from when the OEPM passes on what was produced.

If the opponent only uses the mark for part of its goods, the opposition narrows

Article 21.5 contains the most frequent outcome in these files: if the earlier mark has been used only for part of the goods or services for which it was registered, then for the purposes of examining the opposition it will be treated as registered only for that part. An opponent who registered in five classes and only sells in one comes to the examination with a mark cut down to that class.

That narrowing changes the comparison. Goods that were identical become different, and the likelihood of confusion that sustained the opposition dissolves in the part that matters to you. That is why the analysis of the evidence produced does not stop at calling it insufficient: it is broken down class by class, so that the decision delimits how far the opponent's mark actually reaches.

Article 39.3 marks the opposite limit, and it is worth knowing before celebrating anything: use also covers use of the mark in a form differing in elements which do not alter its distinctive character, and affixing it to goods solely for export purposes. A change of logo, or sales made only outside Spain, are not on their own enough to treat the mark as dead.

The suspension is answered in full, not with proof of use alone

Article 21.2 opens up, in the answer to the suspension, a toolbox that is seldom used: the applicant may withdraw, limit, amend or divide the application. Limiting well is not surrender, it is keeping the goods you will actually exploit and dropping those that merely gave the opponent ammunition. Dividing lets you save and register the undisputed part while the rest is fought out.

That same paragraph adds a technical way out where the objection rests on your mark containing elements caught by subparagraphs b), c) or d) of article 5.1, that is, elements devoid of distinctive character, descriptive, or customary in trade: the applicant may file a declaration excluding those elements from the protection sought, and with it defuse the objection without losing the sign.

It is also worth reviewing the opposition itself. Article 19.2 requires it to be filed by a reasoned and properly documented submission, and treated as filed only if the corresponding fee is paid in time, while article 19.1 delimits who may oppose depending on the ground relied on. An opposition brought by someone who is neither owner nor authorised licensee is fought before use is even reached.

How we run the case, step by step

1. 1

   Reading the suspension and x-raying the opposing mark

   We identify the exact ground of the suspension, who is opposing and on what right, and obtain the certificate for the earlier mark to fix the date its registration became final, which is what decides whether proof of use can be demanded at all.

2. 2

   Tracking the opponent's real use in the market

   Before a word is written we look for the earlier mark where it ought to be: physical and online shops, catalogues, advertising, social media, filed accounts and sector databases. That search tells us whether demanding the evidence is a bluff or a winning route.

3. 3

   Demanding proof of use and answering the suspension

   We file the separate, express and unconditional document demanding the evidence, and with it the submissions attacking the comparison of signs and goods. Where it suits, the application is limited or divided in the same act to save what is not in dispute.

4. 4

   Analysing the evidence produced and replying to it

   Once the evidence arrives, we examine class by class the place, time, extent and nature of the use, weed out documents that are undated or untranslated, and file our submissions within the month granted by article 21 bis.7 of the Regulation.

5. 5

   Decision, appeal or settlement

   The OEPM grants, refuses or partly grants. Depending on the outcome we appeal through administrative channels, negotiate with the opponent a split of goods that lets you register, or start preparing a revocation claim against the dormant mark.

The law that applies

• Art. 21 Ley 17/2001 de Marcas. Governs suspension of the file where there are oppositions or objections raised of the Office's own motion, and the examination of the opposition. Paragraph 3 lets the applicant require the opponent to prove genuine use of the earlier mark over the preceding five years, if that mark had already been registered for five years, and orders the opposition to be dismissed absent that proof. Paragraph 5 cuts the earlier mark down to the goods actually used, and paragraph 6 extends the mechanism to EU trade marks. BOE-A-2001-23093
• Art. 21 bis del Reglamento de la Ley de Marcas (RD 687/2002). Sets out how proof of use is demanded and taken: a formal, express request, in a separate document and unconditional; the request is passed to the opponent, who must produce the evidence within one month, with the opposition dismissed if it produces nothing, produces insufficient evidence or fails to justify non use; the content must cover place, time, extent and nature; it lists the admissible documents; it requires Spanish translation of foreign evidence; and it gives the applicant one month to reply once the evidence is passed on. BOE-A-2002-13981
• Art. 39 Ley 17/2001 de Marcas. Defines the genuine use required: five years from registration without use in Spain, or five uninterrupted years of suspended use, subject the mark to the sanctions in articles 21, 41, 54 and 59. Time runs from the day the registration becomes final, a date entered in the Register. Use in a form that does not alter the distinctive character counts, as does affixing the mark solely for export, and non use is excused by circumstances beyond the owner's control. BOE-A-2001-23093
• Art. 19 Ley 17/2001 de Marcas. Sets who may oppose registration once the application is published and on what grounds, distinguishing any aggrieved person for absolute grounds from owners or authorised licensees for relative ones. It requires the opposition to be filed by a reasoned and properly documented submission and treated as filed only if the fee is paid in time. It allows reliance on several earlier rights of the same owner and may target all or part of the goods applied for. BOE-A-2001-23093

Each article checked against the consolidated text published in the BOE (the Spanish official gazette).

Frequently asked questions