The SPTO has recently published the “Informative Manual on Proof of Use, a new mean of defense” which, as the title indicates, analyzes the proceedings of proof of use made available, as a means of defense, to the applicant of a trademark or trade name in cases in which his application has been challenged by an earlier trademark.
In these cases, the applicant can now request that the opponent demonstrate the effective use of the sign on which grounds he opposes. If he does not prove it, the opposition based on that sign will not been taken into account.
The proof of use is regulated in the Trademark Law (article 21) and the implementing Regulation (articles 21 bis and 22)
The possibility of requesting proof of use in the opposition procedure affects those applications submitted after May 1, 2019 (included) opposed by previous signs registered for more than five years.
The TM Law states that the use of the trademark must be effective. This means it must be sufficient to fulfill its essential function as an indicator of business origin: distinguish the products and / or services for which they are granted.
It will not be enough a probable or credible proof of use, but it is necessary that the use is demonstrated, therefore the opponent must fulfill the four factors: place, time, scope, and nature. of the use with respect to the products and services on which his opposition is based and for which the previous trademark is registered. Also, the use carried out must be “as the mark is shown in the Registry”.
The SPTO must take into account all the concurrent circumstances in the specific case and assess the evidence as a whole.
On the other hand, apparent use, which does not tend to fulfill the function of indicating business origin, will not be considered, in any case, sufficient.
As for proper reasons for non-use, they shall be deemed to be those that are independent of the will of its owner and that absolutely prevent the use. Additionally, will not be proper reasons for non-use the economic or financial complications; the time required to proceed with the launching; negotiations to assign the sign to a third party, or the fact that an application for invalidity of the earlier trademark on which the opposition is based has been filed.
Regarding the specific procedure, the request for proof of use must be made within the non-extendable period of one month from the publication of the suspension and can be conducted independently or along with the allegations.
In turn, the opponent must provide the proof (in Spanish or with the corresponding translation) within a period of one month from the publication of the request for proof of use and, finally, the applicant will have one month from the publication of the referral. of the proof of use to present his arguments against it. Regardless of whether evidence and allegations have been provided or not, the SPTO will proceed to issue a decision.
