Trademarks must be put to effective use in the market after five years since their registration (art. 39 LM). The burden imposed on its holders becomes of vital importance in the current Spanish Trademark Law, which conditions the success of oppositions to the presentation of proof of use of the opposing trademark.
The Spanish PTO does not investigate ex officio whether the earlier mark has been used. Such examination only takes place upon request of the applicant facing an opposition.
Without proof there is no use. The evidence must be dated, packaging of the goods must show the expiration date of the product, catalogues must mention a date as well as websites and published news and articles. The mere presence of the brand on a website only shows that the website is accessible to the public. This fact alone is not sufficient to prove actual use.
In terms of nature, trademarks must be used as registered. Word marks are not considered used as registered if they are used with special typographical characters, so that the overall appearance of the word mark becomes that of a figurative mark. Regarding figurative trademarks, substantial changes in logos will require new registrations.
Regarding the scope of trademarks, it is appropriate to carefully review whether the products and services in relation to which the brand has been used really fall within the category designated in the registrations. Otherwise, the records must be updated.
In case of non-use, it is possible to appeal to the figure of coverage marks, a resource used by those who, after the five-year grace period, wish to keep the records of unused marks without risk of cancellation. The submission of new applications will activate a new grace period for an additional five years.
SO MUCH IT IS WORTH NOT HAVING A RIGHT, HOW MUCH NOT BEING ABLE TO PROVE IT. NO PROVE, NO RIGHT.
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