One of the recurrent topics in trade mark litigation (specially in cancellation actions on the grounds of lack of use and infringement cases) is where resides the distinctivity in mixed marks. Those type of registrations were defined by the Court of Justice of the European Communities in the case C-488/06 P as those "comprising both graphic and word elements".

It is not uncommon that trade mark owners vary the representation of their registered mixed marks in trade but, what are the acceptable limits to that?

A recent Judgment of the Spanish CTM Court no. 1 tackles this issue. In that specific case, the respondent based its defence (amongst other arguments) in the fact that the claimant's mixed marks were not used in trade "as registered", as it used in trade another chromatic variation different to the one it registered.

The CTM as stake (no. 001823608) had this specific appearance:

The Court ruled that in that specific case, the "strength" (literal) of the claimant's mixed mark resided in its word element, that was "nuclear" to its distintinctive aptitude. The defence based on the lack of use was therefore dismissed as the claimant met its burden of proof when it provided documents that demonstrated that the word element of the mark ("Areas" was used in a "constant and real" way by the claimant.