In opposition proceedings or applications for trademark invalidity, an effective defense is not only based on sound legal arguments, but also on having solid evidence to prove its effective use in the market, bearing in mind that proof of use may be required as a defense strategy. This applies both in Spain and the EU, as well as in other territories.
Why is it important to have a repository of proof of use?
Anticipating potential disputes and having such evidence properly organized can make the difference between preserving a right or losing it—especially considering the short deadlines granted by the offices for its submission, and the fact that translations into a specific language may be required. In addition, the evidence must comply with the formal requirements of each office. For this reason, it is highly advisable to maintain an updated and easily accessible repository of proof of use.
What is considered proof of use?
To be valid, proof of use must consist of a set of documents showing that a registered trademark has been genuinely and effectively used in trade for the goods or services for which it is protected during the previous 5 years. It must demonstrate the following factors:
- Place: use in the territory where the trademark is registered.
- Time: within the reference period required by law.
- Extent: sufficient commercial presence.
- Nature: public use, consistent with the registration (same representation and for the same registered goods and/or services).
Based on these requirements, examples of documentation that may serve as proof of use include:
- Invoices from the relevant period showing the trademark (min. 10 invoices per year).
- Labels, packaging, or containers.
- Catalogues, price lists, or photographs showing the trademark applied to the product and date.
- Printed or digital advertising, including the trademark in ads, brochures, or on the website.
- Sworn statements providing context for the use.
Among all these documents, invoices are the most highly valued means of proof by examiners. For the rest of the documentation, it is important that it is dated and that the trademark appears visibly.
Keys to organizing your proof of use repository
Once the concept and the required documentation are clear, the next step is to act. It is essential to gather the information and materials in advance and organize them logically (by date, territories, etc.).
Although it may seem optional, having an up-to-date and well-structured archive of evidence of use can make the difference between preserving or losing a trademark right. It is a highly effective protection tool in opposition proceedings, to neutralize non-use allegations, avoid invalidations, and strengthen the strategic position in trademark disputes and litigation.
At PONTI & PARTNERS, we can guide and assist you in creating a proof of use repository, as well as in any process related to your trademark, and advise you so that your distinctive sign enjoys the best protection and remains fully valid.
