THE OBLIGATORY USE OF THE TRADEMARK: How to prove that you use your trademark so as not to lose it

18 November, 2020
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Industrial Property
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Irene Moneo


Historically, trademark law, despite granting restricted use of a trademark to its owner, has always advocated competitiveness in a plural market. For this reason, your trademark could and can be declared expired, if it is not used within a period of 5 years, unless there is just cause.

Prior to the latest reform in the Trademark Law, trademark owners were empowered to oppose the entry in the registry of competing third-party trademarks, without having to prove the use of their own. Furthermore, this fact was not debatable. In this sense, the expiration of a registered trademark due to lack of use could only be claimed through the courts. Thus, if the interested party in discussing whether a registered trademark was in disuse, he was obliged to file an action for expiration before the Commercial Court.

Since January 2019, also at the administrative level and for opposition to the registration of a trademark requested by a third party, the opposing owners have the obligation to prove the effective use of their own trademark. Being such oppositions a common practice throughout the life of the brand, the collection of continuous evidence of effective use of the same has become more important than ever.

In this sense we find the recent case of the BIG MAC brand (from the McDonald’s company). Faced with the application for registration of a similar competing trademark, McDonald’s filed an opposition in the administrative phase. Opposition that led to the declaration of expiration of the BIG MAC brand itself, on the basis that the evidence provided did not allow proving that said hamburger had actually been offered for sale. This proves that although the use is a no-brainer, it has to be tested properly.

What is using a trademark? How do I prove it?

The main proof of use and accepted by the administration and the courts is the commercialization of the products or services for which the trademark is registered. Specifically, that of a real and effective use in the market. So it has to be external, facing the public. In addition, it must be proven that this use of the trademark is intended to expand the market share of its owner or to maintain the one it already has.

The requirements to justify that the commercialization of the products or services is being carried out in the sense of maintaining the market share or expanding it, will depend on the products or services for which the trademark is registered. For example, sometimes with the sale of 3 “super luxury” cars the market maintenance quota is already met, but with the sale of 10 T-shirts, not.

Do I have any alternative?

From MES Advocats we do not advise our clients to entrust the proof of use of their brand in other aspects than the commercialization of the products or services for which it is registered. Any other type of evidence considerably reduces the defense capacity of the holder before an application for the expiration of his trademark (see BIG MAC case).

However, the advertising use prior to marketing and in conjunction with a strategic plan for the sale of the products or the offering of the imminent services, for example, could be sufficient proof of the effective use of the brand that identifies such products or services. In any case, the proof of use lies, again, in the commercialization of the specific products or services for which it is registered.

To this day, jurisprudence continues to outline the concept of “sufficient proof of the effective use of a trademark” and in this sense we find the last judgment of the CJEU dated October 22, 2020, for the proof of use of the TESTAROSSA trademark, owned by Ferrari, and which identifies one of the company’s most legendary vehicle models, but which officially ceased to be marketed in 1996.

Ferrari submitted proof of use of the brand in the last 5 years, claiming that, on the one hand, it had used it to market spare parts, accessories and after-sales maintenance services for TESTAROSSA car models; and on the other hand, because the company itself continued to sell second-hand models under the aforementioned brand.

In this sense and in line with what has already been indicated in this article, the CJEU indicated that, in order to consider whether the uses carried out are appropriate to maintain or create market shares for the protected products, the nature of the same must also be considered, the characteristics of the market, the magnitude and the frequency of use of the brand. The fact that the use of the brand is not related to products recently offered in the market, but to products already marketed, does not exclude genuine use, if the owner uses the same brand for spare parts that are part of those products or have a direct relationship with products already marketed. Consequently, the use by Ferrari of the TESTAROSSA brand for spare parts that are part of the TESTAROSSA vehicles already sold, can constitute an effective use, not only to identify the spare parts themselves, but also to distinguish the vehicles in yes.

Regarding the resale of TESTAROSSA cars, the CJEU clarifies that, if the brand has been used in accordance with its essential function of guaranteeing the business origin of the products, such use can be classified as genuine despite the fact that these products have already been marketed previously. Based on this, it is correct to conclude that there is also genuine use when the mark has been used for second-hand products, provided that the mark fulfills its function of indicating the business origin. That is, the product comes from the owner of the same, not from a third party.
However, the acceptance of this type of evidence, as highlighted by the EUIPO and CJEU Guidelines, must be interpreted restrictively, must be limited only in very exceptional cases.

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