The Royal Decree-law of partial modification of the Trademark Law has been recently passed. It implements the EU Directive to approximate the laws of the Member States relating to trademarks and will enter into force in Spain next January 14, 2019 (except for the rules regarding the evidence of use and the Spanish Patent and Trademark Office’s capacity to decide invalidity or revocation actions).
The changes produced by this implementation mean a homogenization of the Spanish trademark registration system with the European Union system before EUIPO. However, there are certain changes that do not result from the transposition of the mentioned Directive. They come from the experience and review of the current needs.
For information purposes, please see the modifications underlined as follows:
1. The capacity to register a trademark or a trade name is available to any natural or legal person.
Capacity is now recognized to any natural or legal person regardless nationality, residence or applicability of certain benefits for members of international conventions (namely, the Paris Convention or the World Trade Organization).
2. The formal prerequisite of “graphic representation” is deleted in the definition of trademark being now enough the capability to be represented without further ado.
As a consequence of the new technologies, it is no longer required for the distinctive sign applied for to be susceptible to graphic representation. The trademark or trade name is now only requested to be capable of being represented.
3. The absolute grounds for refusal are systematized (in particular, those referring to the protection of the designations of origin, protected geographical indications, traditional terms for wines and traditional specialties) and a new prohibition regarding plant varieties has been incorporated.
The prohibitions regarding (i) designations of origin, (ii) geographical indications, (iii) traditional terms for wines and (iv) traditional specialties refer to their EU or national regulations.
In addition, a new ground for refusal is added referring to those signs that consist of, or reproduce in their essential elements, an earlier plant variety denomination.
4. The distinction between a well-known trademark and a reputed trademark has been eliminated, and a single category which deserves enhanced protection is now foreseen.
The previous regulation distinguished between well-known and reputed trademarks or trade names. There is only one category currently foreseen.
5. A new relative ground for refusal is added: incompatibility with designations of origin or protected geographical indications.
After including the non-regitrability as a trademark of signs dissenting with designations of origin or protected geographical indications, a double character is given to these (as absolute and relative ground for refusal). This ground is hence allowed to be examined ex officio and invoked as a ground to oppose (although it is not like that in Spain, otherwise, it would not be possible to invoke it within opposition proceedings in all countries if it was not treated as a relative ground).
6. The request for proof of use to the opponent within opposition proceedings has been incorporated.
The possibility to request the owner of the earlier opposing trademark proof of the use of the trademark(s) on which the opposition is grounded -if it(they) has(ve) been registered for more than 5 years- is a novelty that implies a clear harmonization with Community regulations.
That is why, once this part enters into force (for what we will need to wait until the implementing regulations have been passed), it will be convenient to verify which trademarks are subject to an obligation of use and how these are being used, since failing to prove such use within opposition proceedings may open the door to possible cancellation actions for non-use.
7. The capacity to decide invalidity or revocation actions is transferred to the Spanish Patent and Trademark Office (SPTMO) and this capacity remains in the Courts when it is by means of a counterclaim.
The direct invalidity actions and revocation actions (for non-use) will be handled by the SPTMO, which also implies a clear harmonization with the proceedings followed before EUIPO.
However, this change will not enter into force until 2023.
INGENIAS, January 2019