News in trademarks: proof of use

The transposition of Directive 2015/2436 of the European Parliament and of the Council, of December 16, 2015, on the approximation of the laws of the Member States on trademarks, through RD-Law 23/2018, means the reform of Law 17/2001 on Trademarks.

Among its main points was the introduction of the proof of use in the oppositions phase. This new part of the procedure allows trademark applicants to defend themselves in the event that oppositions are filed based on prior rights, since it obliges anyone who opposes the registration of a trademark application to prove the use of the signs on which you base your opposition so that it can be taken into account.

In order to respond to the demand for information arising from users of the trademark registration system in relation to this new part of the procedure the Department of Distinctive Signs prepared  an information manual.

In it you will be able to find information about what the proof of use is, who can request it, or about which prior rights can be requested to proof the use. In addition, the manual explains what an effective use of a trademark is, the factors in which it is necessary to prove such effective use, as well as the reasons that can justify the lack of use. The different phases of this procedure and the most important formal issues to consider during the procedure are also emphasized.

Until May 1 of this year, 15,465 oppositions have been filed to applications filed as of May 1, 2019, the date on which the regulatory development of article 21 of the LM that regulates the proof of use came into force. In order to defend against said oppositions, 1,107 requests for proof of use have been presented and supporting evidence of this effective use has been provided in 689 files.

The introduction of this new phase of the procedure has been a huge challenge for the Spanish Patent and Trademark Office, O.A. (OEPM), as it has had to substantially modify its internal procedures and the established workflow. In addition, five new electronic procedures have been developed to make it possible to present in a simple and accessible way not only the request for proof of use but all the subsequent procedures necessary to carry out the processing of this new part of the procedure.

Ultimately, this manual will allow not only the applicant for the proof of use but also the person who must prove the use of the prior rights, to have sufficient information to be able to correctly carry out the necessary procedures to conclude this phase of the procedure, knowing that it is of a phase that can imply important consequences: if the use of said signs is not proven, the opposition will not be taken into account.