On April 30, Spain finalized the reform of its trademark law, started in late 2018. From that date, the Royal Decree 306/2019 of 26 April 2019 amending the Regulations under Spanish Trademark Act 17/2001 entered into force.
The possibility to request proof of use in defense in opposition proceedings is one of the main innovations introduced into Spanish law by the 2018 reform. The European Union already provides for such a means of defense in article 47 of the European Union Trademark Regulation (EUTR). Thus, this reform of Spanish law is part of the welcome European harmonization.
The Royal Decree 306/2019, under discussion, establishes how this new defense will be implemented.
Thus, from now on, proof of use may be required for all opposition proceedings filed since May 1, 2019.
This mean of defense can be invoked against Spanish trademarks and trade names and against international trademarks designating Spain. However, not all prior right can be contested. To be challenged, the prior trademark or trade name must have been registered for at least five years. The holder of such prior rights will then have the burden of proof of the actual exploitation of the rights claimed.
If the evidence provided is insufficient, then the opposition request will be rejected. The relevant prior right or the existence of a likelihood of confusion will not be taken into consideration for the resolution of the dispute.
In this respect, the documents provided as evidence must refer to the goods and/or services for which the prior right is registered. If the opposition is based on part of the goods and/or services, then the right holder must provide the proof of a genuine use only for those goods and/or services. The supporting evidences must establish the real and serious exploitation of the prior right. This exploitation is established when products and/or services are offered for sale and put into the market.
The documents communicated must indicate the place, date, extent and nature of the sign’s use. For example, that may be catalogues, brochures, invoices, labels, advertisements, etc. Items provided by third parties constitute concrete and independent evidence. As such, their probative value is higher than the value given by the prior trademark owner’s evidence.
The possibility of requiring a proof of use as a mean of defense in opposition proceedings is a valuable asset to defeat such action. Therefore, before starting any opposition proceedings, a trademark owner should be in a position to provide proof of use.
The Royal Decree has set out the conditions to be met. It remains to be seen how much room for maneuver will be permitted for the Spanish Trademark Office to assess the validity of the evidence provided.
Dreyfus assists its clients worldwide in their trademarks’ protection and defense strategies. Do not hesitate to contact us for an audit of your trademarks portfolios in Spain!