Amendment of the Spanish Trademark Act due to the transposition of the Directive (EU) 2015/2436

Cloe Adelantado

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On 21 December 2018, Spanish Royal Decree-Law 23/2018 was approved, transposing Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trademarks that partially amends the Spanish Law 17/2001 of 7 December on trademarks. This modification entered into force on January 14, 2019.

The most significant modifications of the Spanish Trademark Act are as follows:

1. Elimination of the graphical representation as a requirement

The first of the modifications introduced by the Royal Decree-Law is the suppression of the requirement of graphic representation to define the concept of a trademark. From now on, the examiner will only require that the sign can be represented in the Trademark Register.

Signs may be represented in any way deemed appropriate using generally available technology, provided that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.

The representation of distinctive signs may be made by any means. They may therefore be considered trademarks for example signs relating to movement, sound, multimedia or holograms, among others.

2. Limitations on trademark registration

The second of the amendments introduced by the legislator is related to the limitations on the registration of trademarks, extending the catalogue of absolute prohibitions established in Article 5 of the Spanish Trademark Act.

The legislator systematises the absolute prohibitions including denominations of origin, traditional terms of wines, guaranteed traditional specialties and the denominations of plant varieties, referring directly to the legal instruments of the Union or the national law to avoid errors of interpretation.

3. Elimination of the concept of notoriety

Until the approval of the aforementioned Royal Decree-Law, trademarks in Spain could enjoy enhanced protection depending on the target public. Trademarks in Spain were classified as: (i) well-known marks or notorious trademarks (all those trademarks known within a specific sector) (ii) or renowned trademarks (all those trademarks known to the public).

With the entry into force of the Royal Decree-Law, the distinction between notorious and renowned trademarks disappears, with only one category foreseen, that of renown, extending such protection also to trade names.

4. Legal standing of licensees

The legal standing of licensees to bring trademark infringement actions is the object of special regulation.

The general principle established is that the licensee needs the consent of the owner of the trademark for initiating infringement actions of licensed trademark. However, the exclusive licensee is entitled to initiate the action if, after having requested the owner for these purposes, the latter had not brought legal action for infringement.

5. Proof of use in opposition proceedings

One of the main developments introduced in the Spanish Trademark Act is the possibility that in opposition proceedings the applicant against whom an opposition is filed, may request from the opponent proof of use of the earlier trademark or, where appropriate, proof that there have been justified reasons for non.-use.

It is also added in this sense and as an additional requirement that the applicant of the new trademark can only make use of this right when the earlier trademark has been registered for at least five years at the date of filing or priority of the later trademark.

This requirement of proof of use will not become effective until the administrative regulations that will develop the Royal Decree-Law enter into force.

6. Invalidity and revocation proceedings

Another main substantial novelty incorporated in the Spanish Trademark Act is in relation to the jurisdiction of nullity and lapse proceedings by direct means.

The new Trademark Act grants to the Spanish Patent and Trademark Office (SPTO) the power to resolve nullity and revocation proceedings by direct means, residing these proceedings in the future within the frame of the by administrative proceedings. The civil jurisdiction still keeps its jurisdiction when the nullity is alleged through a counterclaim in infringement proceedings.

However, given that the SPTO must provide itself with the necessary structure and mechanisms in order to be able to assume this new competence, as well as to train its personnel to perform this new function, the Royal Decree-Law foresees that this modification will not enter into force until January 14, 2023.

While the SPTO does not assume the competence to declare the nullity or lapse of the distinctive signs regulated in the mentioned Trademark Act, the civil jurisdiction will continue to be the only competent.

7. Fight against piracy

Another important aspect of the new legislation is the reinforcement of the protection of the trademark owner against acts of piracy. The new Spanish Trademark Act creates the possibility of prohibiting the introduction of goods identified with identical or similar trademarks that are not authorised, not being necessary to demonstrate the actual commercialization of such goods.

Although it was already incorporated by the Spanish legislator in its provisions of the Spanish Act 17/2001, of 7 December, on Trademarks, a large part of the rules now imposed by Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trademarks, specifically in the areas of the trademark as an object of property rights, collective marks or certain procedural rules, with these new modifications the legislator intends to further harmonize the Spanish legislation to the aforementioned Directive, simplify and streamline proceedings for the benefit of the interested parties, all with the aim of allowing a proper functioning of the internal market in the European Union.