Proving Acquired Distinctiveness Under Ley 17/2001: Saving a Descriptive Mark in Spain

When the OEPM refuses a trade mark application for descriptiveness or lack of distinctive character under Article 5(1)(b) or (c) of Ley 17/2001, the applicant is not necessarily without recourse. Spanish law — in line with the EU Trade Mark Directive — recognises that a sign which is initially non-distinctive can become registrable if it has acquired distinctiveness through use. This is sometimes referred to internationally as “secondary meaning” — the consuming public has come to recognise the descriptive term as a brand, rather than as a mere description. However, the evidentiary burden in Spain is high, and the OEPM applies demanding standards that require careful preparation.

The Legal Basis: Article 5(2) of the Trade Mark Act

Article 5(2) of Ley 17/2001 provides that the prohibitions under Article 5(1)(b), (c), and (d) — lack of distinctiveness, descriptiveness, and generic terms that have become customary in trade — shall not apply where the trade mark has acquired distinctive character through the use made of it before the date of the application.

This means the acquired distinctiveness must exist at the time of filing. Evidence of use and recognition that post-dates the application will not satisfy the requirement. Applicants must build their case before submitting the application, or at the very least, must demonstrate that the evidence they present reflects the position as of the filing date.

What Must Be Proven

The applicant must demonstrate that, as a result of extensive use, a significant proportion of the relevant public in Spain identifies the descriptive sign as a trade mark — that is, as an indicator of the commercial origin of the goods or services, rather than as a description of their characteristics.

The assessment is made from the perspective of the average consumer of the relevant goods or services in Spain. The evidence must relate to the Spanish market specifically — international use or recognition, while providing supporting context, does not substitute for proof of use and recognition in Spain.

Types of Evidence Accepted

The OEPM, consistent with EU practice established by the Court of Justice of the European Union (CJEU), considers the following types of evidence relevant to proving acquired distinctiveness:

• Market share: Data showing the mark’s share of the relevant product or service market in Spain. A significant market share strongly supports the conclusion that consumers associate the sign with a specific source.
• Consumer surveys and recognition studies: Professionally conducted surveys demonstrating that a significant proportion of the relevant Spanish public identifies the sign as a brand. These are often the most persuasive evidence, but they must be methodologically sound — biased or leading questions will undermine the survey’s credibility.
• Duration, extent, and geographical reach of use in Spain: How long the mark has been used, how consistently, and across which regions of Spain. Use limited to a single city or region may not suffice — the Spanish Supreme Court has held (STS 34/2016) that distinctiveness must be proven at the national level.
• Advertising and promotional expenditure: Investment in marketing directed at Spanish consumers, accompanied by samples of actual advertisements (print, digital, television, social media, outdoor). Both the amount spent and the reach achieved are relevant.
• Sales volumes and revenue: Figures demonstrating significant commercial activity under the mark in Spain, including units sold, revenue generated, and distribution footprint.
• Media coverage: Press articles, reviews, editorial mentions, and social media attention in Spanish publications and platforms that reference the mark in connection with the relevant goods or services.
• Third-party recognition: Awards, industry rankings, or independent assessments that reference the mark as a brand.
• Statements from trade associations or chambers of commerce: Declarations from relevant industry bodies confirming recognition of the mark.

The Standard of Proof

The OEPM requires that the evidence, taken as a whole, demonstrates that a significant proportion of the relevant public in Spain perceives the sign as a trade mark. This is consistent with the CJEU’s guidance in landmark cases such as Windsurfing Chiemsee (C-108/97 and C-109/97), which established the criteria for assessing acquired distinctiveness across the EU.

There is no fixed numerical threshold. The OEPM makes a qualitative assessment based on the totality of the evidence. However, weak or isolated evidence — such as a handful of invoices or a single press article — will not suffice. The more descriptive the sign, the stronger the evidence required to demonstrate that consumers have come to perceive it as a brand.

Timing: The Critical Date

The acquired distinctiveness must exist as of the filing date of the application (or the priority date, if priority is claimed). Evidence must relate to the period up to and including that date. Evidence of use or recognition that arises only after filing is irrelevant to the assessment.

This timing requirement has important strategic implications: applicants who anticipate a descriptiveness refusal must begin building their evidence base well before filing the application.

Acquired Distinctiveness as a Defence to Invalidation

Even if a descriptive mark was registered without demonstrating acquired distinctiveness at the time of filing, the registration may be defended against an invalidation action if the owner can show that the mark has since acquired distinctiveness through use. This provides a post-registration safety net, but it is not a strategy — relying on it means risking a vulnerable registration that may be challenged at any time.

The Procedure

When the OEPM issues a provisional refusal for descriptiveness, the applicant has one month to respond. The evidence of acquired distinctiveness should be submitted within this period, along with arguments explaining why the evidence demonstrates consumer recognition of the sign as a brand.

If the OEPM maintains its refusal, appeals follow the standard administrative route: first to the OEPM’s Board of Appeal (recurso de alzada), and then to the specialised commercial sections of the Provincial Courts of Appeal.

Strategic Recommendations

• Build evidence before filing: Do not file a descriptive mark and hope to argue acquired distinctiveness on the fly. Accumulate evidence of use, advertising, sales, media coverage, and ideally a consumer recognition survey before submitting the application.
• Commission a proper survey: A well-designed consumer survey conducted in Spain by an independent market research firm is the single most persuasive piece of evidence. Ensure the methodology is transparent and defensible.
• Document everything from day one: From the first day of use in Spain, maintain organised records of all commercial activity, advertising, media coverage, and sales. This evidence may be needed years later.
• Prove national recognition: Evidence limited to a single region or city may be insufficient. Demonstrate use and recognition across Spain.
• Consider the alternative: The most cost-effective strategy is often to invest in an inherently distinctive mark rather than spending significant resources to prove acquired distinctiveness for a descriptive one.

Common Mistakes

• Filing without evidence and expecting to argue later: The one-month response window is short. Evidence should be prepared in advance.
• Submitting only international evidence: Acquired distinctiveness must be proven in Spain. Global sales, international advertising, and foreign consumer surveys do not substitute for Spanish evidence.
• Using a poorly designed survey: Leading questions, biased sampling, or ambiguous methodology will undermine the survey’s value.
• Relying on advertising spend alone: High advertising expenditure shows investment, but it does not directly prove consumer recognition. The evidence must demonstrate the result of the investment — that consumers actually perceive the sign as a brand.
• Assuming acquired distinctiveness is easy to prove: The more descriptive the sign, the higher the evidentiary bar. For highly descriptive marks, the evidence requirements can be very demanding.

Key Takeaway

Acquired distinctiveness is the legal safety valve for descriptive marks in Spain — but it is a narrow and demanding path. The OEPM requires substantial, Spain-specific evidence demonstrating that the relevant public recognises the descriptive sign as a brand. Market share data, consumer surveys, advertising investment, and sales figures all contribute to the assessment, but no single piece of evidence is sufficient alone. The critical date is the filing date, meaning evidence must be prepared in advance. For most applicants, the more reliable strategy is to choose inherently distinctive marks that avoid the descriptiveness issue entirely.