If you have a brand you are interested in knowing this…

This current year 2019, with the entry into force of the modifications in the trademark law and its regulations, a new figure was incorporated in the procedure for granting files, the obligation to prove the use of a trademark if it is so claimed in a opposition process; If that effective use is not proven, the opposition will be dismissed. The requirement to demand proof of use is that 5 years have passed since the publication of the concession. This modification comes to harmonize what already existed in Europe, regulated by the EUIPO, and which was already found in many other countries where even the "grace" period, for which it is not necessary to prove use, drops from five years to three.

In this way, Law 17/2001 on Trademarks establishes in its article 21 section 3, the following:

3. At the request of the applicant, the proprietor of the earlier mark who filed the opposition shall provide proof that, in the course of the five years prior to the filing date or priority date of the later mark, the earlier mark has been subject to an effective use, in accordance with the provisions of article 39, or that there have been justifiable causes for its lack of use, provided that on said date of filing or priority of the later trademark the earlier trademark has been registered for at least five years, in accordance with to the provisions of article 39. In the absence of such proof, the opposition will be dismissed

The first tangible and positive effect that we find is the solution to an unfortunately widespread problem, which gave wings to the most clever of the class and with the worst intentions, since they blocked access to registration to third parties who intended to use trademarks that those others they had not in use; in some cases, this led to a request for an amount in exchange for the transfer or sale of the registration. Other situations were simply settled with the impossibility of using the intended trademark, by those who had a legitimate interest. Unfortunately, many projects protected under a brand have been locked in drawers because third parties simply blocked their access to the registry, either unintentionally or completely voluntarily. This unfair situation has not only occurred in trademarks, it is also possible to find it in the world of patents, being a phenomenon recognized as PATENT TROLL.

This measure in the opposition process is welcome, necessary and long-awaited, but it falls short compared to other administrations such as the North American one; The USPTO, the agency in charge of registering and validating inventions and trademarks in the United States, requires trademark applicants to prove the continued and effective use of their trademark every 5 years; Although for practical purposes and in some cases, it may be relatively easy to provide such evidence, and it would not necessarily imply actual use, which is required if it is healthy for the proper functioning of the market.

To our represented, we always recommend keeping an open file where they must keep all kinds of evidence that can justify the legitimate use of their brand. What must we provide to prove the use of our brand? For this we will attend to the Regulation of the trademark law and the indications established in its article 21 bis. TEST OF USE, sections 3 and 4:

3. The proof of use of the mark will contain indications on the place, time, scope and nature of the use of the opposing mark in relation to the products or services for which it is registered and the opposition is based.
4. Evidence of use will be limited to the presentation of supporting documents and elements such as invoices, catalogues, price lists, advertisements, packaging, labels, photographs and relevant written statements. The provisions of sections 3 and 4 of article 60 of this Regulation shall apply to the test of use.

In this way we must focus on documentation that provides us with information on the place, time, scope and nature of the use of our brand in relation to the products or services for which it is registered, all of them being cumulative; Invoices, sales figures, catalogs (how they are distributed, where and when), price lists, advertisements (where, when, what population does it reach), packaging, labels, photographs and written statements (by third parties/independents), websites (by itself it will not be relevant, you must provide, for example, number of visitors, place, time and scope of use) and for our part we add that the advertising made by third parties will also have enough weight to justify and value the use; If it is not proven, the opposition will be dismissed.

What should we take into account in summary:

A - If the proof of use is not duly provided, the trademark can be canceled or an opposition process can be lost. This would be the famous BIG MAC case, McDonald's lost the brand for product and catering services for not having proven the use convincingly, resolution still appealable

B - If a trademark is not used for the protected products/services, it will not merit the protection conferred by registration and may be canceled by a third party. This would be the case of the conflicts with ZARA, for travel organization activities, restoration that obviously did not provide, and that in some situations became decisions that could be reviewed.

Será en el año 2023 cuándo entrará en vigor la posibilidad de que la propia OEPM (Oficina Española de Patentes y Marcas) pueda anular una marca de la que no se pueda probar un uso, por lo que ya no será necesario acudir a los tribunales para evitar que terceros, con marcas registradas sin uso legítimo, puedan continuar con su actividad obstaculizadora.

Image by Gerd Altmann from Pixabay