The Existence of 'Proper Reasons' for Non-Use of a Trademark: An Exception Interpreted Very Strictly

In principle, a trademark will only be protected due to its use. In the absence of actual and serious use, the owner may still avoid the cancellation of their trademark by demonstrating the existence of "proper reasons" for its non-use. However, it is necessary for the three cumulative conditions required to justify this non-use to be met.

Cancellation Action of May 6, 2022 es-jmbar-1100_2020

In a cancellation action against the Spanish designation of an international trademark, the Commercial Court of Barcelona reiterated the conditions required to justify the non-use of a trademark.

Thus, Article 39.4 of the Spanish Trademark Law (Law 17/2001, hereinafter "LM") provides that a cause justifying the non-use of a trademark must:

• Have a direct link with the trademark
• Make the use of the said trademark impossible, or at least unreasonable
• Be independent of the will of its owner

The justification for non-use can, depending on the case, cover the entire relevant period of 5 years or only part of it, in which case it may not always be considered as excluding the requirement for proof of use.

In such a context, the duration during which the reason for non-use was applicable and the time elapsed since it was no longer relevant will be decisive.

In this case, the Court rejected the non-use exception invoked by the defendant as it did not meet the requirements of the LM.