Through its lawyer and R&D+i Legal Consultancy Manager, Amalla Mayea, PONS IP has participated in the online meeting organized by the Spanish Patent and Trademark Office (SPTO) to address the new developments regarding the new practice in the procedures for filing proof of use following the changes in the regulatory framework established in the Trademark Act. One of the main updates introduced was precisely the inclusion of the new proof of use concept within the Spanish registration procedure which, applicable since May 2019 in our country, in practice represents a different way of approaching the legal defense of trademark owners’ rights against the actions of potential opponents.
Along with this regulatory development, the emergence of technologies such as blockchain or public key infrastructure with qualified timestamps and electronic signature as a useful technological disruption allied to trademark rights holders, making it possible to generate evidence on key dates in the defense procedures of our intellectual property assets such as trademarks.
To analyze this dual reality, the round table was moderated by José Antonio Gil Celedonio, Director of the SPTO Office, and Francisco Ripoll Vázquez, Head of the Examination Area at the SPTO’s Distinctive Signs Department, together with Joana De Moura, Team Leader of the EUIPO’s International Cooperation and Legal Affairs Department, and Inmaculada de la Haza de Lara, Vice-President of COAPI, who together with our lawyer analyzed the administrative-legal aspects of this new procedure and shared their opinion from the perspective of the Registration Offices, but also from that of professionals in the field of intellectual property in the framework of the procedures already underway for companies.
In her speech, Amaya Mallea shared two of the most recurring doubts of trademark owners regarding proof of use submission: the date of the proof and the comprehensiveness of the content provided, especially in online environments where providing reliable proof of trademark use is more difficult, as well as in other media where including a related date is less common, such as product catalogs, among others.
PONS IP lawyer recalled the EUIPO guideline in this regard, which already considers the materials submitted with timestamps in online environments as “reliable”, so although PONS IP is using this technology through its Safe Evidence service, Mallea demanded in her speech a clearer regulation on blockchain at national and European level that clearly defines the areas of application for this blockchain technology in IP matters. She also pointed out the absence of precedent as one of the current barriers to the massive use of this tool, something that in her opinion is about to change as the technical and legal security they offer is connected to the progressive acknowledgement of their legal validity by the European institutions. “These technologies are here to stay, and in a short period of time we will see how this way of generating evidence in proof of use submission will start to be massively implemented in the daily practice of the Offices in the very near future”, concluded the PONS IP attorney.
