Registering a trademark allows you to protect the name, logo, or any other sign that identifies a business, product, or service. However, this right is not maintained solely by paying renewals. The law requires that the mark be genuinely used in the marketplace and allows for its cancellation if it remains inactive for five consecutive years.
The key points of using a registered trademark in 30 seconds
- A trademark can be renewed every ten years, but it must be actively used to maintain full protection.
- After five years without effective use, a third party can request its cancellation.
- You don’t need to sell large quantities, but you must demonstrate genuine commercial activity.
- Invoices, contracts, packaging, advertising, and catalogs serve as proof of use.
- Spanish, European, and international trademarks are subject to different territorial rules.
This obligation applies to national trademarks registered with the Spanish Patent and Trademark Office (OEPM), EU trademarks processed by EUIPO, and international applications managed through the World Intellectual Property Organization (WIPO).
The idea is simple: registration protects real business activity, but it is not intended to indefinitely block names or logos when there are no products or services behind them.
What does the law consider as effective use?
Effective use of a mark does not depend solely on the number of sales. A company may sell few units and still maintain protection if it operates in a small, specialized, or high-priced market.
For example, an industrial machinery manufacturer may conduct few transactions annually and demonstrate real activity. Conversely, an isolated sale of a mass-market product might not suffice if it appears to be only organized to avoid losing the registration.
Courts and industrial property offices evaluate each case collectively, considering how long the mark has been used, how frequently, in which territory, for what products or services, and the volume of business generated.
They also assess whether the use has a genuine commercial purpose. Symbolic operations, documents prepared solely for procedure, or internal activities that never reach consumers are usually deemed insufficient.
Furthermore, the mark must be linked to the products or services for which it was registered. Showing that a company is active is not enough if the invoices, campaigns, or contracts do not connect that activity to the protected sign.
What happens after five years of non-use?
The legislation grants the owner an initial five-year period to start using the trademark. Once that time passes, any authorized person can request its cancellation if there has been no real use.
Protection is not automatically lost. Someone must initiate a procedure, and the competent office or, if applicable, a court must declare the cancellation.
Since January 2023, OEPM can make decisions directly on nullity and cancellation requests for Spanish trademarks. Previously, many of these disputes had to be handled through the courts.
Cancellation can also be partial. For instance, if a mark was registered for clothing, shoes, and accessories but was only used for T-shirts, the owner might keep protection for the used products and lose it for the rest.
This risk is common when registering a mark across many categories with future business in mind. The more categories included, the harder it might be to prove actual market presence for each.
Cancellation can also occur if the mark was used for some time but activity ceased for five consecutive years.
Exemptions exist when justified reasons prevent use. However, it is generally insufficient to claim lack of customers, economic problems, or a business decision to delay launch. The reason must be beyond the owner’s control and directly related to the inability to exploit the mark.
How to prove a mark is being used
The owner typically bears the responsibility to demonstrate use when a cancellation request is filed or when another company challenges the mark in an opposition proceeding.
Therefore, it is advisable to keep documentation from the start of activity and not wait until a dispute arises.
Invoices are among the most common proof, especially if they clearly display the mark, date, sold product, and transaction destination. Distribution contracts, licensing agreements, catalogs, brochures, advertising campaigns, packaging, labels, and product photographs can also serve as evidence.
Websites and social media can help, but a simple screenshot might be insufficient unless it shows publication date, targeted territory, or reach.
A comprehensive set of documents, evaluated together, best demonstrates sustained activity over time.
For example, a company could retain invoices over several years, packaging samples, advertising campaigns, distributor agreements, and online store statistics. This collection offers a more robust proof than a single isolated document.
It is also advisable to organize documents by country and product, as this can be critical when the mark covers multiple activities or markets.
Logo changes can also cause issues
Companies often update their branding over the years. Generally, minor variations—such as changing the font, simplifying secondary elements, or adjusting colors—are acceptable if they do not alter the mark’s distinctive character.
Problems arise when a redesign eliminates or radically transforms elements that enable recognition of the mark.
If the new logo differs too significantly, its use may not qualify as proof of use of the registered version.
Therefore, a major rebranding should include a review of existing registrations. In some cases, it might be wise to file a new application and keep both protections during a transition period.
Usage by distributors, franchisees, or licensees can also be valid if authorized by the owner and if it is possible to demonstrate this commercial relationship.
There is no single global trademark
Companies can choose different strategies to protect trademarks depending on where they operate.
A Spanish mark is filed with OEPM and has effect only within Spain. It can be renewed indefinitely every ten years, but the obligation to use it remains.
European trademarks are processed by EUIPO, providing a unitary protection across member states. This doesn’t mean it must be used everywhere, but the use should be sufficiently broad within the European market based on circumstances.
For protection in multiple countries, the Madrid System managed by WIPO is available. It allows a centralized application designating multiple territories.
However, an international mark does not automatically grant identical rights worldwide. Each country examines applications according to its laws and may require use within its territory.
It is also not enough to only use the mark in Spain to maintain rights in designated countries. If a company registers a mark in the USA, Japan, or Mexico, it must meet the requirements of each market.
Official offices provide free search tools to check prior registrations. OEPM maintains its own databases; EUIPO offers tools like TMview; and WIPO allows searching international marks via Madrid Monitor and the Global Brand Database.
Renewing a mark does not eliminate the risk of cancellation
A trademark is usually granted for ten years and can be renewed as many times as the owner wishes. Yet, a renewed mark remains vulnerable if it is not used.
This is important because some companies believe that paying the renewal fee secures all rights. In reality, renewal preserves the registration but does not replace the need to demonstrate actual commercial exploitation.
Lack of use can also hinder the owner’s ability to oppose newer trademarks. If the prior mark has been registered for over five years, the other party can request proof of its use.
Without sufficient evidence, the mark may lose its ability to block similar applications, even if it remains officially registered.
Proper management includes periodically reviewing protected products and services, keeping evidence of activity, and ensuring that the mark’s appearance matches the registered version. The value of a mark depends not only on having a certificate but on maintaining a recognizable, demonstrable presence in the market.
Frequently Asked Questions
Does a mark automatically expire after five years of non-use?
No. Cancellation must be requested and declared by the competent authority. However, a mark inactive for five years becomes vulnerable to loss of protection.
Is it necessary to sell a lot to keep a mark?
There is no fixed minimum volume applicable in all cases. Sales must reflect genuine commercial activity that aligns with the product, sector, and market size.
Can social media be used to prove use?
They can serve as part of the evidence, especially if posts are dated and showcase marketed products or services. It’s preferable to supplement them with invoices, contracts, advertising, and other documents.
Does a European mark also protect outside the EU?
No. The European Union trademark only confers rights within member states. To obtain protection elsewhere, national applications or Madrid System filings are necessary.
