Proof of Use in Opposition Procedures
Regardless of some significant developments introduced in the context of the notice of opposition and with regard to the submission of evidence and documents accompanying the opposition, a new article has been introduced developing the possibility of requesting proof of use within the opposition procedure.
Now the applicant can request said proof of use of the trademark(s) basis of the opposition to the opponent who is challenging its registration, provided that such proof of use is legally enforceable at that time.
It is also provided for the possibility to plead "non – use justified reasons" in the event that the opposing trademark(s) are challenged this way. Furthermore, it is also regulated the form in which this proof of use may be requested, its content and scope, as well as the timing for its request. Likewise it is also regulated the time limit for the opponent to submit arguments and observations.
The request for proof during an opposition procedure, in accordance with the provisions of Article 21.3 of the Trademark Law, shall only be admissible if it is filed formally and expressly in a separate document.
In the event that a request for proof of use of an earlier mark has been filed, the Spanish Patent and Trademark Office shall transmit this request to the opponent so that within one month he may submit the corresponding proof of use. If, within the said period, the opponent does not provide any proof or this is insufficient or, where appropriate, there is no justifiable cause for non-use, the opposition will be rejected.
The proof of use of the mark may contain:
- price lists,
- photographs and
- written statements and affidavits.
The request for proof of use should be made at the time set for the applicant to reply to the objection raised by the SPTMO, which includes the opposition filed. Arguments can also be filed in reply to the proof of use filed, so once this proof of use has been filed, the Spanish Patent and Trademark Office shall communicate it to the applicant, providing for a one month period to submit arguments and observations if the allegations or the proof of use filed are considered by this party to be insufficient.
In conclusion, this regulation will represent important changes in our procedural regulation. We will keep you punctually informed of any further development in this regard.