Tag Archives: Use

New amendment to Regulation implementing the Trademark Act fires starting pistol for proof of use in Spain

Courtesy of Mohamed Hassan at Pixabay

The amended Regulation implementing  the Spanish Trademark Act (Act No. 17/2001) has been published has been published the 30th April and enters into force the 1st May 2019.

With the approval of this amendment, the starting pistol has been fired for applicants of trademarks, in the context of opposition proceedings, to be able to require the opponent to furnish proof of use of the registrations on which the opposition is based, provided that the registrations are subject to the use requirement. Thus, if the opponent fails to furnish proof of use of the mark invoked as the basis for opposition or show that there are proper reasons for non-use, the opposition will be dismissed with respect to that mark.

This is an important change to the Spanish trademark system, arising from the transposition of Directive (EU) 2015/2436 to approximate the laws of the Member States relating to trademarks.

However, pursuant to the First Transitional Provision, this amendment will not affect trademark and tradename proceedings commenced before this amendment to the Regulation comes into force. Only applications filed as of 1 May will be subject to the new system of proof of use in opposition proceedings.

As already anticipated, the entry into force of the new system for administrative invalidity and revocation proceedings has been postponed until 14 January 2023.

Author: Luis Baz
Visit our website: http://www.elzaburu.es/en

An oddity: The official fee for rehabilitation in the event of non-use of a trademark in Honduras

The Republic of Honduras in Central America is somewhat unusual in its approach to certain aspects of trademark protection.

Article 106 of the country’s Industrial Property Act provides for an optional means of protection for owners who have failed to make use of their trademarks, enabling them to safeguard their marks from the risk of cancellation on that ground by paying what is known as a “non-use rehabilitation fee”.

As one might typically expect, trademarks in Honduras must be put to use in the marketplace. However, the possibility of covering for non-use through the payment of a fee is something that can perhaps be considered almost exclusive to Honduras.

A cancellation action may be brought in Honduras whenever a mark is not in use and the plaintiff knows that there has been no use thereof during the preceding three years and that the owner has not paid the rehabilitation fee during that time.

Thus, in the event of non-use of a trademark over three consecutive years, it is highly advisable to pay the rehabilitation fee. It is similarly advisable to pay that fee in a situation where, although the mark has been used, documentary evidence of that use is not available.

In practice, since there is a legally established provision that enables trademark owners to avoid non-use cancellation through the payment of a fee which is simple and also inexpensive (the official fees amount to approximately 25€), it is recommended to pay the fee, for safety’s sake, for all periods where there has been no use of a mark.

 

Author: Cristina Arroyo

Visit our website: http://www.elzaburu.es/en

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