Background of the Trademark Expiration Case
Trademarks are valid for ten years and may be renewed indefinitely. However, the owner must make effective use of them in the marketplace. Failure to use a trademark for five consecutive years may result in its expiration; a request for expiration must be filed with the Spanish Patent and Trademark Office (OEPM).
In this context, the Provincial Court of Madrid (APM) recently confirmed the partial lapse due to nonuse of several trademarks belonging to the Spanish Olympic Committee (COE).
The ruling is significant because it addresses key issues in trademark law, such as standing to request revocation and the scope of the requirement for actual use of the registered mark.
The trademark dispute between OLIMPO and the COE's OLIMPIADA trademarks
The proceedings stem from the application filed with the Spanish Patent and Trademark Office (OEPM) by the company Miguel Bellido to register the OLIMPO trademark.
The COE opposed this request, citing trademarks it owned that included the term " OLIMPIADA."
In the face of this opposition, Miguel Bellido not only defended his trademark application but also filed several parallel applications to have the COE’s trademarks declared invalid on the grounds of non-use.
After reviewing the documentation provided, the Spanish Patent and Trademark Office (OEPM) declared those trademarks to have expired for all goods and services, except for those related to “education, training, and sports activities” (Class 41).
The COE appealed this decision, but the Provincial Court of Madrid dismissed the appeal and upheld the trademark’s expiration, except for the services mentioned.
Who Can File a Petition to Cancel a Trademark for Nonuse
One of the COE's main arguments was to challenge Miguel Bellido's standing to request the expiration of his trademarks.
The Spanish Olympic Committee maintained that the company had not suffered any harm, since the OEPM ultimately granted the OLIMPO trademark despite the opposition filed.
However, the Provincial Court adopts a broad interpretation of the concept of “aggrieved party” in proceedings for forfeiture due to lack of use.
The court considers that there is a public interest in ensuring that only trademarks that are actually used remain registered; therefore, the requirement regarding harm set forth in Article 58.1 of the Trademark Law must be interpreted flexibly.
Consequently, it holds that, in principle, it is sufficient for the applicant to consider himself or herself affected by the contested trademark—a circumstance that is presumed by the very filing of the application—unless there are exceptional cases of abuse.
Furthermore, the Court notes that the fact that the COE’s opposition was unsuccessful and that the OLIMPO trademark was ultimately registered does not retroactively eliminate the standing that the applicant had when it filed the action for revocation.
Proof of the trademark's actual use in the marketplace
Another important aspect of the ruling concerns proof of trademark use.
The documentation provided by the COE only demonstrated the use of its trademarks in connection with education, training, and sports activities, but not with respect to the other goods and services included in its registrations.
The evidence provided included posts on its website, Google search results, and references to the Olympic Games, as well as information regarding events such as the Paris Games.
However, the Provincial Court considers that these elements do not sufficiently prove genuine use of the trademark in the course of trade for the goods and services for which the trademark was declared expired.
Reputation or legal recognition does not replace the use of the trademark
The ruling also addresses another argument raised by the COE: its institutional standing and the prestige associated with the Olympic movement.
The Court acknowledges that sports legislation may grant the COE exclusive rights to certain marks.
However, the court notes that if an entity decides to register such signs as trademarks, it must comply with the obligations under the trademark system, including actual use in connection with the protected goods and services.
In this regard, the fact that a trademark is well-known in certain sectors or that an official body has rights recognized by other laws does not exempt it from complying with the requirements of trademark law.
Furthermore, the Court emphasizes that the COE has other legal avenues available to prevent the registration of certain marks by third parties, such as those provided for in Article 5.1.f) of the Trademark Law, as it holds exclusive rights recognized by applicable law.
However, you cannot obtain additional protection through the trademark system if you do not meet the specific requirements imposed by that system on the trademark owner in order to maintain the trademark as such.
Standing to Sue in Trademark Expiration Cases and Its Broad Interpretation
According to the ruling, standing to file a claim for forfeiture due to lack of use must be interpreted broadly.
The concept of “aggrieved party” should not unduly restrict access to this remedy. Exclusion should be limited to exceptional cases involving bad faith or abuse of rights—concepts that, according to European case law, must be interpreted narrowly.
Furthermore, standing is not limited solely to identical or similar goods or services that could prevent the registration of a later trademark.
Had that been the case, Miguel Bellido would not have been entitled to request the cancellation of the COE’s trademarks with respect to the wide range of goods and services protected by them.
Public Interest in Purifying the Trademark Register
Thus, this case underscores that in proceedings for cancellation due to nonuse, there is not only a private interest but also a public interest in purging the trademark register.
Furthermore, it is important not to forget that in these cases, European Union law must be interpreted uniformly. In this regard, it should be noted that in this context, the term “aggrieved party” is not used; rather, standing to sue is held by those who have legal capacity.
Jesús Gómez Montero, Honorary Partner at ELZABURU.