AMENDMENT OF THE SPANISH TRADEMARK (TM) LAW AND OF ITS IMPLEMENTING REGULATION
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The Spanish TM Law has been amended with the main aim of transposing the 2015 EU Harmonization Directive, the amendment was published on January 14, 2019 and most of its provisions are applicable since then. Furthermore, the changes in the Regulation implementing the same where published on April 30, 2019.
Some of the main relevant novelties in the Spanish TM system, in line with the EU TM system, are the following;
- The applicant of an opposed application now has the possibility of requesting the opponent to furnish proof of use of its previous right/s, if the earlier right has been registered for at least five years as of the date of filing/priority of the opposed application. The opponent may rely on a valid justification of non-use. The amendments to the Implementing Regulation develop this significant change in our TM system;
- Proof of use must be requested expressly and within the applicant’s deadline to reply to the opposition. The opponent must file proof of use within one month.
- The relevant period within which use must be proved is five years before the date of filing/priority of the opposed application.
- The means of evidence, the indications which must be contained in the same and the formal requirements are parallel to those indicated by the EUTMR; supporting documents and items such as invoices, catalogues, price lists, advertisements, packages, labels, photographs, and relevant statements in writing, containing indications concerning the place, time, extent and nature of use of the opposing TM. Evidence that is not in Spanish must be translated.
- The Spanish Patents and Trademark Office (SPTO) will send the evidence of use to the applicant who will be given a one-month deadline to comment the same and file observations in reply to the opposition. If the opponent does not file proof of use or a valid justification of non-use, the opposition will be dismissed.
- This possibility to request proof of use affects proceedings involving TM/tradename applications filed on or after May 1, 2019.
- As of January 14, 2023, the SPTO will have competences to decide on TM invalidity and revocation proceedings. Furthermore, the owner of the contested TM will be able to request that the proprietor of the earlier trademark/s files proof of use, if the earlier trademark has been registered for at least five years. The courts will still have competence to decide in counterclaims brought in infringement proceedings. Until said date, the Courts will continue to handle exclusively these actions.
- The requirement of graphical representation in the concept of trademark is abolished, thus, facilitating the registration of non-traditional trademarks. It is only required that the sign be susceptible of representation in the trademark register. The representation must be, clear, precise, self-contained, easily accessible, intelligible, durable and objective.
- Absolute prohibitions concerning designations of origin, traditional terms for wines, traditional specialties guaranteed and plant variety denominations are systematized.
- The distinction between a well-known and a renowned TM/tradename disappears maintaining only one category, renowned character in Spain (ES TMs) or in the European Union (EUTMs). According to the most extended case-law, a renowned TM must be known “by a significant part of the public concerned by the goods or services”.
- The holder of a registered TM may seek an injunction against goods in transit (brought into Spain from, and destined to, third countries). However, this right lapses if the declarant or holder of the goods provides evidence that the owner of the registered TM is not entitled to prohibit the placing of the goods on the market of the country of final destination.
- The intervening-right is now a means of defense to infringement.
- Licensees may, under certain circumstances, lodge oppositions and bring actions for TM infringement.