Proof of use in opposition proceedings

The decree amending the Implementing Regulation of the Spanish Trademark Law has been published today, 30 April 2019. One of the most relevant changes refers to proof of use in opposition proceedings.

These are the 10 most important aspects that must be taken into account:

1. Proof of use will be applicable to opposition proceedings relating to trademark applications filed on or after 1st May 2019, date of entry into force of the New Implementing Regulation.

2. Proof of use can only be requested if the opposing trademark has been registered for more than 5 years at the time the opposition is filed.

3. Proof of use must be requested within the term for replying to the opposition, in a separate document and in an unconditional manner

4. The opponent will have a term of one month to file the evidence of use.

5. The documents must be in Spanish or translated into Spanish and the translations must be filed within this one-month period.

6. The evidence must consist of written documents such as invoices, catalogues, price lists, advertising material, packages, labels, photographs and relevant statements in writing.

7. The evidence must contain indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

8. The request for proof of use may be made with or without submitting, at the same time, observations in reply to the opposition. Such observations may be filed together with the observations in reply to the proof of use.

9. If the opponent does not submit proof of use or show that there are proper reasons for non-use, the Office will reject the opposition. If the evidence of use refers to only part of the goods or services for which the opposing trademark is registered, for the purposes of the examination of the opposition it will considered to be registered in respect only of that part of the goods or services.

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