A dormant mark is blocking you: apply for its revocation

The case, in five lines

What is brought

An application to revoke the registration for non use, under article 54.1.a) of the Trade Mark Act read with article 39, or a counterclaim for revocation within an infringement action.

Before which court

The OEPM (the Spanish Patent and Trade Mark Office) where it is brought by direct application; the Commercial Section of the Tribunal de Instancia (the first-instance court) where it is brought as a counterclaim in infringement proceedings.

Deadline

There is no deadline for applying, but there is a time requirement: five years without genuine use in Spain since the registration became final, or five uninterrupted years of suspended use. Article 39.2 sets the start of that period on that date of finality, entered in the Register.

Who can bring it

Article 58.1.a) opens it to any natural or legal person, and to associations of manufacturers or traders and lawfully constituted consumer associations, that consider themselves aggrieved and have capacity to sue.

Financial risk

Before the OEPM a fee is paid and there is no costs order, but the application wakes the owner, who may react by proving use you did not find. If it is refused by a final decision, article 61 bars repeating the same ground between the same parties.

The five years run from when the registration became final, not from the application

Article 39.1 subjects to sanction a mark which, within five years from its registration, has not been put by its owner to genuine use in Spain for the goods or services registered, or whose use has been suspended for an uninterrupted period of five years, unless there are proper reasons for that non use. That is the gateway to revocation under article 54.1.a).

Paragraph 2 of that same article shifts the starting point to a place hardly anyone looks at: the period begins on the day the registration of the mark becomes final, and that date is entered in the Trade Mark Register. Months or years may pass between application and finality where there were oppositions or appeals, so an apparently old mark may not yet be five years vulnerable.

That is why the case always starts with the full registry certificate, not with the public extract of the file. If the date of finality does not cover the five year period, the application is premature and lost beyond repair, and it also warns the owner with ample time to start using the mark before you try again.

You do not have to prove a negative: it is the owner who proves use

The structure of the statute places use on the owner's side. Article 39 frames genuine use as its burden, and it is the owner who, under paragraph 5, may invoke proper reasons for non use, understood as obstacles independent of its will, such as import restrictions or other official requirements imposed on the registered goods or services.

The two parallel provisions confirm it expressly. In opposition, article 21.3 requires the opponent to produce evidence of use over the preceding five years, and absent that evidence the opposition is dismissed. In infringement proceedings, article 41.2 requires the owner to establish use if the defendant so requests. In neither is the attacking party asked to prove an absence.

That does not mean your application can go in empty. Article 58.2 requires a reasoned and properly documented submission, with the fee paid. What is documented is the search: where the mark was looked for, in which channels, on what dates and with what result. A well evidenced absence forces the owner out of silence, and that is when the case is decided.

What counts as use is broader than it looks

Before treating a mark as dead it is worth reading article 39.3. Use includes use of the mark in a form differing in elements which do not alter its distinctive character, whether or not that variant is also registered in the owner's name. A logo redesign, a change of typeface or the addition of an accessory element do not, on their own, break the chain of use.

Subparagraph b) of that same paragraph 3 counts as use the affixing of the mark to the goods or their presentation solely for export purposes. A company that sells not a single unit on the Spanish market but manufactures here to sell abroad is using its mark for these purposes. And paragraph 4 adds that use with the owner's consent is deemed made by the owner, which covers licensees and distributors.

Hence the preliminary investigation does not stop at checking whether there is a shop open in Spain. The whole chain is tracked: recorded licences, distributors, customs records, trade fairs, export catalogues and the activity of group companies. Discovering that later, in the owner's reply, means discovering it too late and with the fee already paid.

Revocation can be partial, and that is often all you need

Article 54.2 provides that, where the ground for revocation exists only for part of the goods or services for which the mark is registered, the declaration will extend only to the goods or services affected. And article 58.3 allows the application to be directed against all or part of those goods. Read together, the two rules allow a surgical attack.

It is almost never in your interest to bring down the whole registration. If the earlier mark covers five classes and the owner still sells in one, attacking all five hands it a partial win and a reason to fight hard. Attacking only the classes and goods that actually stand in your way narrows the dispute, makes the case cheaper and makes it far more likely that the owner will not even reply.

It is also worth checking article 54.3 first, which lets the OEPM declare revocation where the mark has not been renewed under article 32 or has been surrendered by its owner. Sometimes the obstacle is already dead because nobody paid a renewal, and merely checking the Register saves the entire case.

If the mark has already been used to oppose you, there is a faster route

Where the dispute arises because the owner of the dormant mark has opposed your application, a revocation case is not always needed. Article 21.3 allows you to require, within that same file, that the opponent prove genuine use over the five years before your filing or priority date, provided its mark had already been registered for five years, and it orders the opposition dismissed if that evidence is missing.

The same applies if the owner sues you. Article 41.2 provides that it may prohibit use of a sign only to the extent that its rights could not be declared revoked for non use when the action is brought, and requires it, if the defendant so requests, to establish use over the five years before the claim where final registration occurred at least five years earlier.

The three routes are combined according to what you need. Proof of use inside the opposition or the lawsuit resolves that particular front, but leaves the other mark alive. Revocation erases it from the Register and clears the path for good. In a serious launch, with investment behind it, definitively clearing the Register usually justifies the extra case.

How we run the case, step by step

1. 1

   Registry diagnosis of the blocking mark

   We obtain the full certificate of the blocking registration: the date it became final, the exact classes and goods, renewals paid, recorded licences, changes of ownership, and whether any surrender or missed renewal is already noted.

2. 2

   Documented investigation of use in the market

   We look for the mark where it ought to be and record the result with dates: physical and online retail, advertising, trade fairs, catalogues, filed accounts, domains, licensees and distributors, including possible export activity.

3. 3

   Deciding the scope and the route

   We determine whether to attack the whole registration or only the classes blocking you, and whether to apply to the OEPM, counterclaim in proceedings already open, or simply demand proof of use within the pending opposition.

4. 4

   Filing the application and challenging the owner's evidence

   We file the reasoned and documented submission with the fee paid. If the owner reacts by producing evidence of use, we analyse its date, extent and nature class by class, and weed out whatever falls outside the five year period.

5. 5

   Making use of the revocation once declared

   Once revocation is declared, we revive your suspended application or file the new one, clear the opposition that was blocking it, and secure the sign in neighbouring classes as well so the episode is not repeated by another owner.

The law that applies

• Art. 39 Ley 17/2001 de Marcas. It places on the owner the burden of using the mark: five years from registration without genuine use in Spain, or five uninterrupted years of suspended use, subject the mark to the sanctions in articles 21, 41, 54 and 59, unless there are proper reasons for non use. It sets the start of the period on the day the registration becomes final, a date entered in the Register. Use includes a form not altering the distinctive character, use solely for export, and use with the owner's consent. BOE-A-2001-23093
• Art. 54 Ley 17/2001 de Marcas. Governs revocation of the mark by application to the OEPM or by counterclaim in an infringement action, and lists its grounds: non use under article 39, the sign becoming the common name for the product through the owner's act or inactivity, and use liable to mislead the public as to nature, quality or origin. It provides for partial revocation where the ground affects only some goods, and adds revocation for failure to renew or for surrender. BOE-A-2001-23093
• Art. 58 Ley 17/2001 de Marcas. Sets who may seek nullity or revocation before the OEPM and how. In article 54.1 cases, standing extends to any natural or legal person and to lawfully constituted associations and consumer bodies that consider themselves aggrieved and have capacity to sue. It requires a reasoned and properly documented submission, and treats the application as filed only once the fee is paid. It may be directed against all or part of the registered goods. BOE-A-2001-23093
• Art. 21.3 Ley 17/2001 de Marcas. Within the examination of an opposition, it lets the applicant require the opponent to produce evidence of genuine use of its earlier mark over the five years preceding the filing or priority date of the later mark, provided the earlier mark had been registered for at least five years. Absent that evidence, the opposition is dismissed. It is the fast route where the conflict with the dormant mark arises inside your own registration file. BOE-A-2001-23093
• Art. 41.2 Ley 17/2001 de Marcas. It confines the infringement action to cases where the owner's rights could not be declared revoked for non use at the time it is brought, and requires the owner, if the defendant so requests, to establish genuine use during the five years preceding the filing of the action, or proper reasons for the lack of it, provided final registration occurred at least five years earlier. BOE-A-2001-23093

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

Frequently asked questions