The 5-Year Non-Use Cancellation Rule in Spain: Article 39 and the OEPM’s New Competence

A registered trade mark in Spain is not a permanent asset that can be held indefinitely without use. Under Article 39 of Ley 17/2001 (the Trade Mark Act), a trade mark registration is liable to revocation if it has not been put to genuine use in Spain for a continuous period of five years following registration. This non-use cancellation rule has always existed in Spanish law, but a major procedural shift in January 2023 — granting the OEPM direct administrative competence over revocation proceedings — has made it significantly easier, faster, and cheaper to cancel dormant trade marks.

The Legal Basis: Article 39 (Formerly Article 57)

Article 39 of the Trade Mark Act provides that a trade mark registration shall be revoked if, within the period of five years following its registration, it has not been put to genuine use in Spain for the goods or services for which it is registered, and there are no proper reasons for non-use. The revocation may also be declared if such use has been suspended for an uninterrupted period of five years.

The revocation applies only to the goods or services for which use is not proven. If the mark has been used for some but not all registered goods or services, the registration survives for the goods or services in genuine use — the cancellation is partial.

What Constitutes “Genuine Use”?

Spanish law follows the EU standard for genuine use, as interpreted by the CJEU. Genuine use requires:

• Actual commercial activity in Spain: The mark must be used in connection with the sale, offering, or promotion of goods or services in the Spanish market. The use must be real, not symbolic or token.
• Use in the form registered or in non-materially altered forms: Use of the mark in a form that differs from the registered mark in elements that do not alter the distinctive character is still considered genuine use. Minor variations in font, colour, or presentation are generally acceptable; substantial changes may not be.
• Use for the registered goods or services: The use must relate to the goods or services covered by the registration. Use of the mark for different, unrelated goods does not protect the registration.
• Use by the owner or with the owner’s consent: Use by a licensee or authorised third party counts, provided the relationship is documented.
• Quantitative and qualitative assessment: The OEPM evaluates both the volume and the nature of use. There is no minimum sales threshold, but the use must be consistent with genuine commercial exploitation, not artificial maintenance of the registration.

The January 2023 Procedural Revolution

Before January 14, 2023, non-use cancellation actions in Spain could only be brought before the civil courts (Commercial Courts at first instance). This was expensive, time-consuming, and procedurally complex — requiring formal litigation with all the associated costs of court proceedings, including mandatory legal representation, notarised powers of attorney, and lengthy timelines.

Since January 14, 2023, the OEPM has assumed direct administrative competence over revocation proceedings, implementing the requirement of EU Directive 2015/2436 (Article 45) that Member States establish “efficient and expeditious” administrative procedures for revocation and invalidity. This change was transposed into Spanish law by Royal Decree-Law 23/2018.

The practical impact has been transformative:

• Lower cost: The official fee for filing a revocation application at the OEPM is €200 — a fraction of the cost of court proceedings.
• Faster resolution: The OEPM has established an official target timeline of 20 months for revocation proceedings, significantly shorter than the average duration of court proceedings.
• Less formality: The administrative proceedings are conducted entirely in writing, with no oral hearings. Notarised powers of attorney are not required. The proceedings allow for the submission of additional evidence after the initial filing.
• Dedicated department: The OEPM has created a new department specifically dedicated to cancellation actions, with separate sections for invalidity and revocation, staffed with specialist examiners.
• Lower barrier to entry: Legal representation by a lawyer or industrial property agent is not mandatory, making the proceedings accessible to a wider range of parties.

The Burden of Proof

As in most European jurisdictions, the burden of proving genuine use falls on the trade mark owner, not on the party requesting revocation. The rationale is the same as elsewhere: the owner is best positioned to demonstrate that the mark has been used. The party requesting revocation needs only to demonstrate a legitimate interest in the cancellation.

Evidence of use typically includes sales invoices, distribution agreements, advertising materials, product packaging, photographs of goods as sold in Spain, import and customs records, and any other documentation demonstrating genuine commercial activity under the mark in the Spanish market.

Proper Reasons for Non-Use

The trade mark owner may defend against revocation by showing that non-use was justified by proper reasons (“causas justificativas”). These are circumstances beyond the owner’s control that prevented use of the mark, such as:

• Import restrictions or trade embargoes.
• Regulatory barriers preventing the marketing of the goods (e.g., pending pharmaceutical approvals).
• Force majeure events.

Purely commercial reasons — such as lack of demand, financial difficulties, or strategic decisions to delay market entry — are generally not accepted as proper reasons for non-use.

Proof of Use in Opposition Proceedings

The non-use rule also has a critical role in opposition proceedings. Since the 2018 amendment, if the earlier mark on which an opposition is based has been registered for more than five years, the applicant can require the opponent to prove genuine use. If the opponent fails to provide sufficient evidence within one month, the opposition is dismissed. This mechanism prevents dormant marks from being weaponised against new applications.

Appeals

Decisions of the OEPM in revocation proceedings can be appealed to the OEPM’s Board of Appeal. Further judicial appeal lies to the specialised commercial sections of the Provincial Courts of Appeal (Audiencias Provinciales). This represents a significant change from the previous system, where OEPM decisions were reviewed by contentious-administrative courts. The consolidation of all trade mark appeals under the civil courts is expected to produce greater consistency in case law.

Coordination with the Civil Courts

Civil courts retain jurisdiction over revocation actions raised as counterclaims in trade mark infringement proceedings. Where the same revocation action is pending both before the OEPM and a court, the principle of priority applies: the body that received the action first has priority, and the other must suspend proceedings. This coordination mechanism prevents contradictory decisions.

Strategic Recommendations

• Audit your portfolio: If you hold registrations in Spain covering goods or services you are not actively using, those registrations are now significantly more vulnerable than before January 2023. Assess which marks are at risk and either commence genuine use or accept the risk of cancellation.
• Maintain evidence of use: Keep organised, dated records of all commercial activity under your marks in Spain — invoices, advertising, product images, distribution agreements. This evidence is your primary defence in any revocation proceeding.
• Use the OEPM revocation route offensively: If a dormant prior mark is blocking your application or business operations, the new OEPM administrative procedure provides a fast, cost-effective way to clear the obstacle. At €200 per application, it is dramatically more accessible than court proceedings.
• Request proof of use in oppositions: If you face an opposition based on a mark registered for more than five years, always consider requiring proof of use. This can eliminate the opposition entirely if the opponent cannot demonstrate genuine use.
• Calendar the five-year deadline: From the date of registration, the clock is ticking. Ensure that genuine commercial use begins within five years and is maintained continuously.

Common Mistakes

• Assuming registration is permanent: A registered mark that is not used for five consecutive years is vulnerable to revocation by any interested party.
• Relying on token use: Isolated or artificial transactions designed solely to maintain the registration may not qualify as genuine use. The use must reflect real commercial activity.
• Failing to document use: When a revocation action is filed, the burden falls on the owner. Without organised evidence, the mark is at serious risk.
• Ignoring the new OEPM procedure: Some practitioners still default to court proceedings out of habit. The OEPM route is now faster, cheaper, and less formal for most revocation actions.
• Not requesting proof of use in oppositions: This is a powerful defence that applicants frequently overlook, particularly those unfamiliar with the 2018 amendment that introduced the mechanism to Spanish opposition proceedings.

Key Takeaway

The five-year non-use cancellation rule under Article 39 has always been a feature of Spanish trade mark law, but the January 2023 transfer of competence to the OEPM has fundamentally changed the practical landscape. Cancelling a dormant mark is now faster, cheaper, and more accessible than ever before. For trade mark owners, this means that unused registrations are no longer safely dormant — they are actively vulnerable. For applicants and competitors facing blocking marks, the OEPM’s administrative revocation procedure is a powerful tool to clear the register. In either case, the message is the same: genuine use in the Spanish market is the foundation of trade mark rights, and the burden of proving it falls squarely on the owner.