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Spain to understand “real and effective use” to a large extent in cancellation actions based on non-use of a trademark
In its decision No. 716/2009 of November 13, 2009, the Spanish Supreme Court upheld the 2005 ruling of the Court of Appeals of Barcelona, which had considered that 2.000,- EUR of olive oil sales over two years and other items such as labels, invoices and catalogues, were sufficient to prove “real and effective” use of a trademark in Spain.
Prior case law had already judged that mere formal use of a trademark, namely occasional and isolated sales, if not continuous, shall be examined on a case-by-case basis in order to decide whether or not they could constitute “real and effective” use. Indeed, it is commonly agreed upon that public use must be proven, which excludes in theory sporadic use only meant to keep alive trademark exclusive rights.
As regards the trademark at stake (Spanish registration No. M 0012921 “MARTI”) protecting olive oils in class 29, the Court of Appeals of Barcelona and the Supreme Court deemed it enough that a handful of euro and a few documents prove “real and effective” use, since the trademark covered a selective product sold in selective places. Thus, the standards to be applied were lowered, and the trademark avoided cancellation based on non-use.
Some considered it surprising that the biggest worldwide producer and consumer of olive oil allowed such low criteria for “real and effective” use of a trademark, especially in view of European case law on this issue. For sure, the judges showed mercy to this trademark filed in 1906, probably embodying a Spanish long-standing practice.