Proof of use has become a decisive factor in trademark opposition proceedings in Spain and the European Union. Its introduction into Spanish law in 2019 has brought about a significant change in the strategy for defending trademark rights, requiring owners to demonstrate actual use of their trademarks in certain cases.
This mechanism not only affects the outcome of a competitive examination but also has a direct impact on the active management of companies' intangible assets.
What is proof of use of a trademark?
The use defense is the right of a trademark applicant to require the opponent to prove that its earlier trademark has been effectively used in the marketplace.
Specifically, this requirement applies when the earlier trademark on which the opposition is based has been registered for more than five years at the time the contested application is filed.
If the owner of the earlier trademark fails to prove such use, the consequence is clear: the opposition is dismissed.
What is meant by "genuine use" of a trademark?
The concept of trademark use is not limited to symbolic or residual use. The law requires actual use sufficient to fulfill its essential function: to identify the commercial origin of the goods or services.
The following is not considered effective use:
- Merely symbolic use
- Isolated actions with no real impact on the market
- Uses intended solely to maintain the registration without any actual commercial activity
On the contrary, the use must be public, external, and market-oriented, and related to the goods or services protected by the trademark.
Requirements for Proof of Use in a Trademark Opposition Proceeding
For evidence of use to be admissible in a trademark opposition proceeding, it must demonstrate all four of the following key elements:
1. Location
It must be demonstrated that the trademark has been used in the territory where it is protected, although it is not necessary to cover the entire territory.
2. Time
The use must have occurred within the five years prior to the contested application.
3. Scope
The intensity of use is evaluated based on sales volume, frequency, duration, or market penetration.
4. Nature
The trademark must be used in accordance with its registration, without altering its distinctive character.
These four factors do not have to be substantiated in a single document, but they must be proven collectively.
What evidence can be submitted?
Proof of a trademark's use is based on a body of evidence that, when analyzed collectively, demonstrates its actual use in the marketplace.
Some of the most common tests include:
- Invoices and delivery slips
- Sales Catalogs
- Media Advertising and Promotional Materials
- Product or packaging photographs
- Participation in trade shows or events
- Sales reports or market research
- Digital evidence (web, social media)
A key point is that this evidence must include information on dates, territory, and the manner of use; otherwise, it may not be taken into account.
Consequences of Failing to Prove Use of a Trademark
The lack of proof of use has a direct impact on trademark opposition proceedings.
If the opponent:
- Failure to submit evidence by the deadline
- Presents insufficient evidence
- Or submits evidence that fails to demonstrate actual use
The objection will be dismissed.
This means that a registered trademark may lose its ability to defend against new applications if it is not being used properly in the marketplace.
In addition, and apart from opposition proceedings, an earlier trademark that is not in use may be subject to a cancellation action, which could result in the loss of the registration.
Usability Testing and Rebranding: A Critical Point
Usage testing is particularly important in rebranding processes, where brands evolve over time.
Use must be consistent with the registration or, at the very least, must not alter the trademark’s distinctive character. If the trademark as used differs substantially from the registered trademark, there is a risk that the use will not be deemed established.
Therefore, taking a cautious approach:
- It is advisable to ensure that actual usage matches what is recorded.
- Update the records as the brand evolves.
- Consider registering word marks to strengthen protection.
The test of use as a strategic element
Product testing has evolved from a technical issue to a strategic element in brand management.
It is not enough to simply register a trademark; it must be used effectively, consistently, and in a documented manner. Otherwise, its defensibility in opposition proceedings may be compromised.
In this context, active management of the trademark portfolio is key. This includes not only registration but also monitoring the actual use of trademarks and ensuring they remain consistent with the registration, especially in situations involving evolution or repositioning.
In these types of situations, having access to specialized advice makes it possible to anticipate risks, properly structure the proof of use, and strengthen the brand’s position in opposition proceedings, incorporating aspects such as trademark monitoring and strategic management of the trademark portfolio.
Lucía Palomino, an attorney in the Trademark Practice Group at Elzaburu,