Entry into force of the new Implementing Regulation of the Spanish Trademark Act including the requirement to submit proof of use in opposition proceedings

Royal Decree 306/2019, of 26 April, modifying the Implementing Regulation of the Spanish Trademark Act 17/2001, was published in the Official State Gazette of 30 April 2019.

As you will recall, at the end of 2018 the Spanish Trademark Act was reformed introducing the possibility for the applicant to request evidence of use of the earlier right claimed (trademark or trade name) in opposition proceedings against Spanish trademark and trade name applications, as well as international trademarks designating Spain.

In this connection, the new Implementing Regulation establishes that proof of use may be requested in opposition proceedings against trademarks and trade names filed as from the 1st of May 2019, date in which it enters into force.

As a result, the owner of the challenged application may now request that the opponent submits evidence of the genuine use of the earlier right claimed, if the latter has been registered for more than five years.

Concerning the evidence to be submitted, as mentioned in our newsletter of 6 February 2019, it should refer to all the goods and/or services for which the earlier right is registered, or on the basis of which it is claimed in the opposition. If no use is proven, or the use only refers to part of the goods or services in which the opposition is based, the latter will be rejected entirely or in part.

The evidence must show the place, time, extent and nature of the use of the sign. Thanks to the long-experienced trademark opposition proceedings in the European Union and the relevant case-law, we contend that the required elements of evidence will be samples and invoices, packaging, labels, price lists, catalogues, brochures, photographs, press articles, affidavits, adverts and publicity. Documents provided by third parties other than the owner of the mark will be very useful since they will be considered pieces of independent concrete evidence. All in all, it must be proven that the products or services are offered for sale and put into the market, and that the brochures are circulated and lead to purchase.

We reiterate our offer to keep dossiers containing evidence of use and/or of reputation of our clients’ registered trademarks and trade names, which should be periodically updated.

Do not hesitate to contact us should you have any further query.