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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.

2019 RECOGNITION: WTR – THE WORLD’S LEADING TRADEMARK PROFESSIONALS

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We are very pleased to share with you that, for third consecutive year, the Carlos Polo & Asociados team has been ranked in The World’s Leading Trademark Professionals’ WTR 1000. Indeed, as this publication stands out:

Carlos Polo & Asociados can meaningfully support brand owners in many ways and provides the full range of trademark registration, portfolio management, litigation and dispute-resolution services”

We must also congratulate our Senior Partner Carlos Polo and Helena Granado, Head of our branch office in Alicante, who have been listed individually. The reiterated recognition that Carlos is a known luminary in the field of trademarks in Spain and a person that “has done much to advance IP and trademark practice in Spain and internationally through his involvement with INTA and taskforces created by various other organisations”, attests to his continued success in the field of Intellectual Property. Likewise, Helena is “recommended by high-level sources for her extensive knowledge of EU trademarks and Community designs”.

We also want to thank our clients and the colleagues who participated in the WTR 1000 research process for providing such positive feedback.

* WTR 1000 – The WTR 1000 research directory, which focuses exclusively on trademark practices and practitioners, has firmly established itself as the definitive ‘go-to’ resource for those seeking world-class legal trademark expertise. As with previous editions, to arrive at the 2019 rankings, World Trademark Review undertook an exhaustive qualitative research project to identify the firms and individuals that are deemed outstanding in this critical area of practice. When identifying the leading firms, factors such as depth of expertise, market presence and the level of work on which they are typically instructed were all taken into account, alongside positive peer and client feedback. https://www.worldtrademarkreview.com/directories/wtr1000

CARLOS POLO & ASOCIADOS AT THE 141TH ANNUAL INTA MEETING – BOSTON, USA. 18-22 MAY

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07.03.19

Three members of our firm, Mónica Polo, Helena Granado and Clara Polo, attended INTA’s Annual Meeting in Boston, USA from May 18 to 22.

The world’s largest and most widely attended trademark event, INTA’s Annual Meeting, offers you the unmatched opportunity to examine key industry issues, gain actionable insights, forge critical partnerships, exchange ideas, and come away energized and equipped to meet the challenges and opportunities offered by a constantly evolving IP landscape.

PTMG: 98th CONFERENCE 2019. 11-12 MARCH. ROME – ITALY

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07.03.19

Mónica Polo and Helena Granado attended the Spring Conference of the Pharmaceutical Trade Marks Group (PTMG) in Rome.

CARLOS POLO & ASOCIADOS AT THE 140TH ANNUAL INTA MEETING – SEATLE, USA. 19-23 MAY

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27.05.18

Four members of our firm attended INTA’s Annual Meeting in Seatle, USA from May 19 to 23.

Join IP professionals, including practitioners, IP Office and government officials, marketers, CEOs and brand protection professionals, from around the world for INTA’s 140th Annual Meeting, May 19–23, 2018, in scenic Seattle, Washington.

The world’s largest and most widely attended trademark event, INTA’s Annual Meeting, offers you the unmatched opportunity to examine key industry issues, gain actionable insights, forge critical partnerships, exchange ideas, and come away energized and equipped to meet the challenges and opportunities offered by a constantly evolving IP landscape.

2018 AWARD – OUR FIRM AND OUR SENIOR PARTNER RECEIVE A NEW RECOGNITION BY ‘WORLD TRADEMARK REVIEW’

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13.03.18

For second consecutive year, our senior partner, Carlos Polo, has been distinguished by ‘World Trademark Review 1000 – The World’s Leading Trademark Professionals’ as the only recognized luminary in the field of trademarks in Spain. In addition, this prestigious publication recognizes, once again, the professional work of our firm and of the individuals Carlos Polo and Helena Granado.

‘With a “fine-tuned understanding of how trademark examiners think”, Carlos Polo & Asociados gets crucial rights granted for domestic and international brand owners without breaking a sweat. Founding partner Carlos Polo renders profound advice on national and pan-European soft IP registration. Armed with an MBA, he always gives commercially and legally sound guidance. Another standout figure, Helena Granado is a “hardworking and personable practitioner, well versed in EUIPO matters and a brilliant English speaker”’.

2018 -WTR 1000

http://www.worldtrademarkreview.com/wtr1000/rankings/Detail.aspx?g=64870510-c527-469e-9c11-f3262a1e28d3[:]

PTMG: 96st CONFERENCE. 19-20 MARCH. PORTO – PORTUGAL

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01.03.18

Mónica Polo and Clara Polo will attend the Spring Conference of the Pharmaceutical Trade Marks Group (PTMG) in Porto.

Noticias Carlos Polo & Asociados

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