{"id":9070,"date":"2022-11-25T10:56:05","date_gmt":"2022-11-25T10:56:05","guid":{"rendered":"https:\/\/www.yunikalaw.com\/?p=9070"},"modified":"2023-04-21T13:56:13","modified_gmt":"2023-04-21T13:56:13","slug":"proof-of-use-in-opposition-proceedings","status":"publish","type":"post","link":"https:\/\/www.yunikalaw.com\/en\/2022\/11\/25\/proof-of-use-in-opposition-proceedings\/","title":{"rendered":"Judgment of the High Court of Justice (TSJ) of Madrid of 28 June 2022 (Appeal 224\/2021)"},"content":{"rendered":"\t\t
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Judgment of the High Court of Justice (TSJ) of Madrid of 28 June 2022 (Appeal 224\/2021)<\/h2>\t\t\t\t<\/div>\n\t\t\t\t
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Matilde Garrig\u00f3s Agull\u00f3<\/h2>\t\t\t\t<\/div>\n\t\t\t\t\t<\/div>\n\t\t<\/div>\n\t\t\t\t\t<\/div>\n\t\t<\/section>\n\t\t\t\t
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Current practice of the Spanish Patent and Trademark Office (SPTO)<\/h2>\t\t\t\t<\/div>\n\t\t\t\t
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Following Royal Decree Law 23\/2018, of 21 December, on the transposition of directives on trademarks, published in the Official State Gazette of 27 December of the same year, in trademark opposition proceedings before the SPTO, if the applicant of a contested trademark requests that the opponent proves use of the trademark on which its opposition is based, the latter must prove effective use of the same. If the proprietor of the earlier mark does not provide the necessary evidence to prove genuine use of the sign, the opposition will be rejected without the SPTO analysing the merits of the case.<\/span><\/p><\/div>

In this context, it is important to mention that opponents will only be obliged to prove use of earlier trade marks that have been registered for more than five years, since the obligation to use a trade mark is not enforceable immediately after registration, but the proprietor has a “grace period” of five years.<\/span><\/p><\/div>

This new method of defence may raise some important questions. It is obvious that when the opposing mark is a Spanish mark, the territory where use must be proved is Spain, but what happens when the opposing mark is an EU mark? Where must use of the mark be proved?<\/span><\/p><\/div>

According to<\/span>\u00a0<\/span>the Information Manual on proof of use published by the SPTO in March 2021<\/span><\/a>,<\/span>\u00a0<\/span>“European Union trademarks must prove that they have been used in accordance with European standards<\/span><\/em>,<\/span><\/em>\u00a0<\/span><\/em>i.e. Regulation 2017\/1001 on the European Union trademark<\/span><\/em><\/a>.\u201d<\/span><\/p><\/div>\t\t\t\t\t\t\t\t<\/div>\n\t\t\t\t\t<\/div>\n\t\t<\/div>\n\t\t\t\t\t<\/div>\n\t\t<\/section>\n\t\t\t\t

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European regulations and case law on proof of use in opposition proceedings<\/h2>\t\t\t\t<\/div>\n\t\t\t\t
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Art.18. (1) of<\/span>\u00a0<\/span>EU Trade Mark Regulation<\/span><\/a>\u00a0<\/span>2017\/1001<\/span><\/u>\u00a0<\/span>provides that where the opposing mark is an EU trade mark, it must be used “in the European Union”.<\/span><\/p><\/div>

The concept of use “in the Union” has been qualified by European case law. In the Leno Merken judgment, the Court of Justice of the EU held that the territorial borders of the Member States should not be taken into account when assessing whether an EU trade mark has had “genuine use” in the EU.<\/span><\/p><\/div>

In the same judgment, it was established that territorial scope is only one of many factors to be taken into account when assessing whether use of an EU trade mark is genuine. Thus, there is no general rule for assessing the use of a trademark from a territorial point of view, but various factors must be examined, such as the characteristics of the goods or services in question, the characteristics of the relevant market and, more generally, all the relevant factors and circumstances in order to establish whether the commercial exploitation of the trademark serves to create or maintain a market share for the goods or services for which it has been registered.<\/span><\/p><\/div>

In view of the above, for the use of an EU trade mark to be considered genuine, it is not necessary for the mark to be used in a large part of the European Union. Indeed, the General Court has held, in several decisions, that the use of an EU trade mark in a single Member State or even in a single city of an EU Member State is sufficient to satisfy the territorial scope criterion.<\/span><\/p><\/div>

In this context, if we apply European rules and case law, it seems clear that in the case of an opposition before the SPTO, if the owner of the opposing EU trademark were required to provide evidence of use, it would be sufficient to provide evidence demonstrating use of the opposing trademark in any EU Member State, and not necessarily in Spain.<\/span><\/div>\t\t\t\t\t\t\t\t<\/div>\n\t\t\t\t\t<\/div>\n\t\t<\/div>\n\t\t\t\t\t<\/div>\n\t\t<\/section>\n\t\t\t\t
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Judgment of the High Court of Justice (TSJ) of Madrid of 28 June 2022 (Appeal 224\/2021)<\/h2>\t\t\t\t<\/div>\n\t\t\t\t
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The<\/span>\u00a0<\/span>judgment cited in the epigraph<\/span><\/a>\u00a0<\/span>is the first judgment to be handed down in Spain on the proof of use in competitive examinations and, as we will explain below, it has very relevant consequences in current practice. <\/span>\u00a0<\/span><\/p><\/div>

The facts were as follows: Establiments Viena, S.A. applied for the trademark PRINZ (mixed) in class 30. This application was opposed by a Dutch company on the basis of its earlier EU trademark PRINCESS (word) in class 29. The SPTO considered that such evidence proved use of the opposing mark and upheld the opposition on the grounds that there was a likelihood of confusion between the opposing marks.<\/span><\/p><\/div>

The SPTO’s decision was appealed and the Madrid Supreme Court upheld the appeal lodged by the applicant (EV S.A.) and ruled that the opposition should not have been admitted as the opponent had not proved genuine use of the PRINCESS mark in Spain.<\/span><\/p><\/div>

The SCJ states in the ninth ground of the judgment that according to<\/span>\u00a0<\/span>article 39 of the Trademark Law 17\/2001<\/span><\/a>, use shall only be deemed to be justified when the trademark“has been put to genuine use in Spain by its owner”.<\/em><\/span><\/p><\/div>\t\t\t\t\t\t\t\t<\/div>\n\t\t\t\t\t<\/div>\n\t\t<\/div>\n\t\t\t\t\t<\/div>\n\t\t<\/section>\n\t\t\t\t

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Conclusion<\/h2>\t\t\t\t<\/div>\n\t\t\t\t
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This judgment is very surprising, not only because it is the only one so far that assesses proof of use in opposition proceedings, but also because it contravenes the unitary sense of the European Union trade mark, and has important practical consequences for all EU trademark owners who wish to enforce their rights in Spain.<\/p>

As mentioned in previous sections, it is clear that the EMPO’s criteria on the genuine use of EU trade marks are in line with European regulations and case law, yet this ruling ignores the interpretations made by European judges.<\/p>

Unfortunately, this decision has not provided any clarity on this issue, and has even created doubts which, in principle, were non-existent for those of us who work in the field of industrial property and, more specifically, trademarks.<\/p>

For the time being, we do not know whether the judgement analysed has been appealed, so it should be taken into consideration, as it is the only judgement on this issue.<\/p>\t\t\t\t\t\t\t\t<\/div>\n\t\t\t\t\t<\/div>\n\t\t<\/div>\n\t\t\t\t\t<\/div>\n\t\t<\/section>\n\t\t\t\t

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About the author<\/h2>\t\t\t\t<\/div>\n\t\t\t\t
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My main areas of expertise include the protection and defence of trademarks, designs and copyrights. I advise my clients on the protection of their intangible assets before the European Union Intellectual Property Office (EUIPO), the Spanish Patent and Trademark Office (OEPM) and the Spanish Courts.<\/p>

I have experience in managing trademark portfolios at international level. In addition to European law, I am familiar with the law of the Andean Community and have first-hand knowlegde of the functioning of national offices in this territory.<\/p>

Management of customs procedures, online surveillance and domain name dispute resolution are other key fields in which I have experience. I am also familiar with copyright litigation, which allows me to advise my clients on copyright matters throughout the duration of their creative process.<\/p>\t\t\t\t\t\t\t\t<\/div>\n\t\t\t\t

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