The importance of genuine use of a registered trademark to preserve its value

The importance of genuine use of a registered trademark to preserve its value

Registering a trademark is one of the most important steps in protecting the identity of a business, product, or service against third parties. However, obtaining a trademark registration does not mean that the right is guaranteed indefinitely. Trademark law requires the owner to make genuine use of the trademark, as the protection system is not intended to allow signs to remain registered indefinitely without any underlying commercial activity. In other words, a trademark acquires its true value when it is actually used in the marketplace to identify goods or services and distinguish them from those of competitors. Genuine use is therefore both a legal requirement and an essential tool for maintaining the exclusivity and economic value of this intangible asset.

What Is Considered Genuine Use of a Registered Trademark According to the Law and the Courts?

Spanish and European trademark legislation requires a trademark to be used genuinely in relation to the goods or services for which it has been registered. However, this does not mean that the trademark must achieve extensive commercial success or hold a significant market share. What matters is that the trademark is used in the course of genuine commercial activity aimed at creating or maintaining a real presence in the market.

The case law of the Court of Justice of the European Union has clarified that purely token or sporadic use intended solely to preserve the registration is not sufficient. Courts assess all the relevant circumstances of each case, including factors such as the volume of sales, the frequency and duration of the use, the geographical scope of the commercial activity, and the characteristics of the relevant economic sector. Even limited use may be regarded as genuine, provided that it reflects real commercial activity consistent with the nature of the business.

Furthermore, the trademark must be used substantially in the form in which it was registered. Minor variations or modernizations may be acceptable if they do not alter the distinctive character of the mark. However, significant modifications could prevent such use from being considered sufficient to maintain trademark protection.

Revocation for Non-Use: What Happens If You Do Not Use Your Trademark for Five Years?

One of the main risks faced by trademark owners is the revocation of their registration due to non-use. Under Spanish Trademark Law, if a trademark has not been put to genuine use for an uninterrupted period of five years following its registration, or if such use has ceased for the same period, any third party with a legitimate interest may apply for its revocation, unless there are valid reasons justifying the lack of use.

The purpose of this legal mechanism is to prevent trademark registrations from being used merely to reserve signs without any genuine commercial activity. The trademark system seeks to ensure that only those trademarks that continue to fulfil their essential function of identifying the commercial origin of goods or services remain protected.

If a trademark is revoked, the owner loses the exclusive rights attached to it in relation to the affected goods or services. As a result, other businesses may be able to register identical or similar signs, provided that the legal requirements are met. Beyond the legal consequences, losing a well-established trademark may also have significant economic and reputational effects, particularly where considerable investment has been made in building brand recognition and market positioning.

How to Prove Genuine Use of Your Trademark and Preserve Its Value Against Third Parties

Being able to demonstrate genuine use of a trademark is essential when defending its validity in revocation proceedings or in opposition and invalidity actions. In most cases, it is the trademark owner who bears the burden of proving that the mark has been genuinely used during the relevant period established by law.

For this reason, it is advisable to retain all documentation capable of demonstrating the commercial exploitation of the trademark. Common examples include invoices bearing the trademark, distribution or licensing agreements, commercial catalogues, advertising campaigns, press and online advertisements, company websites, social media content, product labels, packaging, photographs of marketed goods, and any other evidence showing that the trademark has been actively used in the course of trade.

A single isolated piece of evidence is rarely sufficient. Instead, trademark owners should maintain a consistent body of documentation capable of demonstrating continuous and genuine commercial use over time. A well-organised record-keeping system can prove decisive if the validity of the trademark is later challenged before the Spanish Patent and Trademark Office or the courts.

Ultimately, a registered trademark is one of the most valuable intangible assets a business can own, but its protection depends on genuine and continuous use in the marketplace. Registration is only the first step; maintaining active commercial use and preserving evidence of that use are essential to safeguarding the trademark’s legal and economic value, strengthening the company’s competitive position, and ensuring that its exclusive rights remain fully enforceable against third parties.