The new law will allow applicants to require evidence of use of the trade marks opposing their new applications, in order to guarantee their correct protection.
The new Spanish Trade Mark Act will enter into force on 14 January 2019, and one of the main changes will affect the opposition procedure against Spanish trade marks. From this moment on, whenever you file an opposition against a new trade mark application, the applicant may require the filing of evidence of use of the prior right, as long as the opposing trade mark has been registered for more than five years.
The failing to provide the required evidence of use may have the following consequences:
- The opposition would be rejected for all the goods and/or services for which use is not provided.
- The registration of your trade mark or trade name may be subject to cancellation for lack of use if the applicant of the new trade mark considers that your older trade mark may damage his commercial interests.
In view of the above, ISERN Patentes y Marcas can help you take the following recommended actions:
- To check whether your trade mark portfolio is currently being used according to the registered data.
- In case any trade mark is used in a different way than the registered one (another device or name, or for other goods or services), to apply for a new trade mark that complies with the actual use.
- To identify those registered trade marks that are older than five years and are not being used, but which need to be maintained and be defended from new applications or possible cancellation actions for lack or use. In such cases, and depending on the particularities or each registration, we would propose a specific and personalized strategy.
- To create a file with evidence of use of your trade marks that includes updated documents, such as catalogues, fair exhibitions, invoices, advertisements, pictures, etc., and which would be used in the procedures, when required, to guarantee the protection of your trade marks.
ISERN Patentes y Marcas will inform its clients of any news in relation to the entry into force of the new Spanish Trade Mark Act. If you have any query or need further assistance, we remain at your disposal through all our communication channels.