How to prove the use of your brand: the evidence that strengthens your opposition against other brands

Introduction

When a company files an opposition to a new trademark application, simply holding a prior registration is not enough. In many cases, the Spanish Patent and Trademark Office (OEPM) or the European Union Intellectual Property Office (EUIPO) may require the opponent to demonstrate actual use of their trademark, if requested by the opposing party during the opposition proceedings. This requirement has become a critical point in opposition proceedings, and compliance can mean the difference between winning or losing the defense of an established trademark, given the criteria adopted by examiners regarding the validity and demonstrable quality of the evidence.

In Spain, according to Law 17/2001, of December 7, on Trademarks (modified by art. 1.10 of Royal Decree-Law 23/2018), in its Article 21. Suspension of the application and examination of the opposition.

3. 3. At the applicant’s request, the proprietor of the earlier mark who has filed an opposition shall provide proof that, during the five years before the filing date or priority date of the later mark, the earlier mark has been in actual use, as provided for in Article 39, or that there have been justifiable reasons for its non-use, provided that on the filing date or priority date of the later mark the earlier mark has been registered for at least five years, as provided for in Article 39. In the absence of such proof, the opposition shall be dismissed
4. 4. In the case described in the preceding paragraph, and if the requirements therein are met, the Spanish Patent and Trademark Office shall forward the application to the opponent so that, within the legally prescribed period, they may submit the corresponding proof of use. The Office shall also forward the evidence submitted to the applicant so that they may present their arguments within the period established by regulation.
5. 5. If the earlier mark has been used only for part of the goods or services for which it has been registered, for the purposes of examining the opposition made, it shall be deemed to be registered only for that part of the goods or services.
6. 6. Paragraphs 3, 4, and 5 of this Article shall also apply where the earlier mark is a Union mark. In such a case, the actual use of a Union mark shall be determined in accordance with Article 18 of Regulation (EU) 2017/1001.

In the EU, and as indicated in Regulation (EU) 2017/1001, which regulates the European Union trademark, in its Article 47, “Examination of opposition

2. 2″. At the applicant’s request, the proprietor of an earlier Union trademark who has lodged an opposition shall provide evidence that, during the five years preceding the filing date or the priority date of the Union trademark application, the earlier Union trademark has been in actual use within the Union for the goods or services for which it is registered and on which the opposition is based, or that there are justifiable reasons for the lack of use, provided that the earlier trademark has been registered for at least five years before that date. Failing such evidence, the opposition shall be dismissed. If the earlier Union trademark has been used only for some of the goods or services for which it is registered, it shall be deemed to be registered, for the purposes of examining the opposition, only for those goods or services.
3. 3. Paragraph 2 shall apply to earlier national trademarks referred to in Article 8(2)(a), it being understood that use in the Union shall be replaced by use in the Member State in which the earlier national trademark is protected.
4. 4. If it deems it useful, the Office will invite the parties to a conciliation.
5. 5. If the examination of the opposition reveals that registration of the trademark is excluded for all or part of the goods or services for which the Union trademark is sought, the application shall be rejected for the goods or services concerned. Otherwise, the opposition shall be dismissed.

What is the usage test in a competitive examination?

Proof of use is the set of documents and evidence that demonstrate that the earlier trademark, on which the opposition is based, has been effectively used in the five years before the challenged application. This requirement aims to prevent registered but inactive trademarks from blocking access to registration for new signs that do have a real presence in the market.

The opponent must demonstrate real, effective, and not merely symbolic use that corresponds to genuine commercial exploitation. The objective is not to prove the brand’s economic success, but rather its consistent presence in commercial traffic, proportional to the size of the business or company, and for the products or services it defines.

Types of valid tests to prove the use of the trademark

The key is to present consistent and verifiable documentation, dated between the specified dates, that directly links the trademark to the protected goods or services. Among the most common forms of evidence, though not exhaustively listed, are:

1. Invoices and commercial documents

Invoices must include the brand name, either on the letterhead or in the description of the product or service provided (while maintaining privacy). They are the most direct proof of actual market use. They must indicate the dates and the territory where the transactions took place.

2. Catalogs, delivery notes, and quotes

Catalogs that feature the product brand, along with delivery notes, serve to demonstrate the sale of products or services under that brand, especially when the delivery notes reference a catalog. They must be dated and clearly show the relationship between the brand and the corresponding products or services.

3. Contracts and professional documents

In the case of services, contracts, or reports issued under the brand name, they may be submitted. Emails or business proposals that demonstrate the use of the distinctive mark in orders or deliveries of the product or service are also acceptable.

4. Evidence of Internet and social media usage

Social media posts, corporate websites, and online sales platforms are a growing source of evidence. These should be supplemented with information about the publication date, geographic reach, and the link between the brand and the products or services offered. The Wayback Machine tool is useful in these cases.

5. Advertising and promotional material

Advertisements, brochures, promotional videos, digital campaigns, or even hand-distributed leaflets can serve as evidence. The key is to document the date, territory, and visible use of the brand within them, which can be done by including the leaflet distribution agreement itself and specifying the leaflet’s visual content.

6. Transport documents or home deliveries

Logistics documents—such as shipping labels, waybills, or delivery receipts—can strengthen the evidence by demonstrating effective distribution under the brand. If they are linked to “invoice number…” or “delivery note number…”, the connection to the brand being claimed is complete.

7. Photographs and labels

Images of shop windows, posters, packaging, illuminated signs, or office supplies with the brand visible are useful as long as the date and place can be verified.

Evidence quality criteria

Neither quantity nor the notoriety of the holder is a substitute for solid evidence. It is preferable to present a few high-quality pieces of evidence rather than a large number of documents without direct relevance. Both Offices value consistency, authenticity, and the connection between the documents submitted and the protected goods or services.

Common errors to avoid include invoices without visible branding, evidence omitting the territory or generic documents, or mere delivery notes without reference to a specific product that do not demonstrate actual business activity. Furthermore, the reputation or prestige of the holder does not replace the requirement of actual use.

Usage audit and preventive documentation

Given the increasing demands for evidence in opposition proceedings, it is advisable to adopt a proactive documentation policy. A trademark usage audit allows for the orderly and continuous collection, classification, and preservation of evidence of commercial use and can help identify potential weaknesses: changes that have altered the appearance and/or name of the trademark, the absence of invoices bearing the trademark, and also an inadequate or outdated definition of products or services.

This practice avoids situations where the client has public recognition or media presence but lacks concrete documentation linking the brand to their business activity. With our usage audit, each brand in the portfolio is supported by up-to-date supporting documentation.

Practical tips for preparing for the use of evidence

1. 1. Ensure that invoices and quotes include the visible brand of the product or service being invoiced. If it is not on the letterhead, it can be indicated in the description.
2. 2. Keep copies of catalogs, advertisements, and promotional materials with the date and scope of distribution.
3. 3. Document online activity using certified screenshots or web analytics reports.
4. 4. Maintain consistency in the use of the logo, name, and declared territory. Revision of the brand image may require registration adapted to the latest reality.
5. 5. Conduct regular reviews to ensure that up-to-date documentation is always available.
6. 6. When the “plans” for use have been interrupted for reasons of complex justification (legal, due to a work license or a product marketing license, or due to investment requirements, etc.), it is not considered a reprehensible act to apply again for the trademark with some small variation, thus eliminating the problem of proof of use in very important projects not yet ready for market launch.

Conclusion

Demonstrating trademark use is not only a legal obligation but also a defense strategy against third parties. A strong defense depends both on the trademark’s age and the ability to prove its actual presence in the market.

Investing time in preparing and maintaining reliable documentation can make the difference between keeping and losing rights to an established brand.

At ABECSA, we help companies and professionals gather, maintain, and properly present evidence of trademark usage. Contact us to audit your trademark usage and strengthen your oppositions against third parties. You may request our assistance to assess the strength of your trademarks, which can serve as a basis for opposing another trademark.