How to lose a trademark (and how to avoid it): the importance of demonstrating the effective use of your trademark.

Introduction

Registering or renewing a trademark does not guarantee its indefinite protection. Spanish and European legislation require that registered trademarks are actually used in the market. Otherwise, they may be subject to the sanction of revocation for non-use, if requested by the interested party during the cancellation procedure for alleged non-use or as a defense to a lawsuit. Here, we explain what ‘using a trademark’ really means, what evidence is used to prove it, and how to avoid losing a registration for failure to prove it.

What does it mean to use a trademark effectively?

The effective use of a trademark implies its real and continuous use to distinguish products or services in the market. It is not enough to keep it in the registry or to make symbolic actions. According to the Spanish Patent and Trademark Office (SPTO) and the European Union Intellectual Property Office (EUIPO), the use must be public, commercial, and verifiable, proportional to the size of the company, and for the products or services it defines.

Spanish law

In Spain, according to Law 17/2001, of December 7, 2001, on Trademarks (as amended by art. 1.10 of Royal Decree-Law 23/2018), in its Article 59. Examination of the application for invalidity and revocation.

2. At the request of the owner of the contested mark, the owner of the earlier mark who is a party to the invalidity proceedings shall provide proof that, in the course of the five years preceding the application for invalidity, the earlier mark has been put to genuine use, as provided for in Article 39, for the goods or services for which it is registered and on which the application for invalidity is based, or that there have been proper reasons for non-use, provided that the registration procedure for the earlier mark was completed at least five years before the date of applying invalidity.

3. If, on the filing date of the application or on the priority date of the contested mark, the period of five years during which the earlier mark should have been put to genuine use as provided for in Article 39 had expired, the owner of the earlier mark, in addition to the proof required under paragraph 2 of this Article, shall furnish proof that, during the five years preceding the filing date of the application or the priority date of the contested mark, the earlier mark has been put to genuine use, or that there have been proper reasons for non-use.

4. In the case referred to in paragraph 2, and if the requirements provided for therein are met, the Spanish Patent and Trademark Office shall transfer the request to the owner of the earlier mark so that, within the period laid down by regulation, he may submit the corresponding proof of use as provided for in paragraphs 2 and 3. The Office shall likewise transfer the proof submitted to the owner of the contested mark so that, within the period laid down by regulation, he may present his arguments.

5. In the absence of the evidence referred to in paragraphs 2 and 3, the application for invalidation based on an earlier mark shall be rejected.
6. If the earlier trademark has been used in accordance with the provisions of Article 39 for only part of the goods or services for which it was registered, it shall, for the examination of the application for invalidation, be considered registered only for that part of the goods or services.

7. Paragraphs 2 to 6 of this Article shall also apply where the earlier mark is a mark of the Union. In such a case, the genuine use of an EU trademark shall be determined in accordance with Article 18 of Regulation (EU) No 2017/1001.

European law

In the EU, and according to Regulation (EU) 2017/1001, which regulates the European Union trademark, and in its Article 58, Grounds for revocation

1. The rights of the proprietor of the EU trade mark shall be declared to have lapsed, upon application to the Office or upon a counterclaim in an action for infringement of a trade mark:

(a) if, within an uninterrupted period of five years, the mark has not been put to genuine use in the Union in connection with the goods or services for which it is registered, and there are no proper reasons for non-use; however, no person may claim the revocation of an EU mark if, in the interval between the expiry of the said period and the filing of the application or counterclaim, genuine use of the mark has been commenced or resumed; however, the commencement or resumption of use within a period of three months before the filing of the application or counterclaim, which period shall commence on a date not earlier than the date of expiry of the uninterrupted period of five years of non-use, shall not be taken into account if the preparations for the commencement or resumption of use have taken place after the owner became aware that the application or counterclaim could be filed;

(b) if, as a result of the activity or inactivity of the owner, the mark has become the usual designation in trade of a product or service for which it is registered;

(c) If, as a result of the use of the mark by its owner or with his consent for the goods or services for which it is registered, the mark is liable to mislead the public, particularly as to the nature, quality, or geographical origin of those goods or services.

2. If the ground for revocation exists for only part of the goods or services for which the EU trademark is registered, the rights of the owner shall be revoked only for the goods or services concerned.

Types of evidence valid for proving the use of a trademark

When responding to a revocation action, it is not enough to prove the existence of the trademark. It is necessary to prove its actual use by means of reliable documents. The most common and useful evidence, although not exhaustively detailed, is the following:

1. Proof by means of invoices

Invoices are one of the strongest forms of evidence. They must include the name or logo of the trademark, describe the product or service provided and identified with it, and reflect real operations in the corresponding territory.

2. Proof through delivery notes and catalogs

Commercial delivery notes and catalogs showing use of the mark, especially when associated with deliveries or orders, can strengthen the proof of use. They must be dated and linked to the protected product or service.

3. Proof through professional services

In the case of services, contracts, invoices, or commercial communications in which the mark is used in the actual context of the service, the mark must be provided. For example, reports, opinions, or documents issued under the denomination of the trademark.

4. Evidence subject to professional secrecy

If certain documents are subject to confidentiality, a redacted version or a notarized summary can be provided to certify their authenticity without infringing the privacy of the parties.

5. Proof of Internet use

Screenshots of web pages, social networks, or online sales platforms where the goods or services are marketed under the trademark are also valid. Evidence of publication dates should be provided through certification services or web archiving tools.

6. Proof through advertising and promotion

Advertisements in print or digital media, advertising campaigns, brochures, and promotional material showing the mark in use are key pieces of evidence. It is advisable to include copies with dates, media, and geographic scope.

7. Evidence through physical material or signage

Photographs of signs, packaging, illuminated signs, or corporate material featuring the mark help to demonstrate its actual presence in the market.

Frequent errors that can invalidate the evidence

In practice, many trademark owners lose their rights not for lack of use, but for lack of adequate evidence. Some common mistakes are:

• Invoices without reference to the trademark or on a different letterhead.
• Press clippings about the owner’s reputation, but with no mention of trademark use.
• Documents with customer or territory data crossed out (pretending privacy), preventing identification of the geographical scope of use.
• Accreditation, diplomas, or awards unrelated to the trademark.

Trademark use audit: a preventive tool

To avoid expiration problems, it is advisable to carry out a periodic audit of the use of each trademark. This service allows you to review the available documentation, verify its validity, and create an updated evidentiary dossier that can be submitted to the SPTO or EUIPO if necessary.

Our audit can also help you identify possible weaknesses: Developments that have modified the appearance and/or denomination of the trademark, absence of invoices with the trademark, lack of consistency in the use of the logo, or provision of services in Spain to foreign clients without territorial mention. Also, an inadequate or outdated definition of products or services. All this can be corrected before facing a possible revocation procedure.

Conclusion

Proving effective use of a trademark is not a mere formality, but an essential legal obligation to preserve exclusive rights. Keeping up-to-date and consistent records makes it easier to defend the trademark against a revocation action and strengthens your position vis-à-vis third parties.
Prevention and good document management are the best strategies to protect the value of a trademark.

At ABECSA, we help companies and professionals to document and defend the effective use of their trademarks. Contact us to audit the use of your trademark and guarantee its full validity. It is important that you ask for our help to assess the strength of your trademarks.