The Royal Decree 23/2018 of December 21, 2018 implementing the Trademarks Directive 2015/2436 was published at the Official State Gazette on December 27, 2018 and entered into force for its main part on January 14, 2019.
The aim of the reform is to facilitate the registration of trademarks, reinforce their protection and to fight against the counterfeiting. The role of the Spanish Trademark and Patent Office will be crucial after the reform.
The main change introduced will be the direct competence of the Spanish Trademark Office for invalidity and revocation proceedings. Nevertheless, the deadline for the implementation of this modification is not until January 14, 2023.
This change will accelerate, and significantly reduce the costs for such proceedings.
It should be noted that from this date, it will be only possible to file invalidity and revocation actions before the Courts as a counterclaim in infringement proceedings.
With respect to the most significant modifications that have already entered into force, we refer in particular to the following:
- - Elimination of the graphical representation requirement : this amendment will open the possibility to register the so called “non-traditional marks” such as sound, multi-media, motion marks, holograms ...
- - Persons who can be proprietors of Spanish trademarks: any legal or natural person independently of his/her nationality, country of residence or establishment.
- - Clarification of the absolute grounds: inclusion of specific provisions for designations of origin, geographic indications, traditional terms for wine, traditional specialties guaranteed and vegetal varieties.
Furthermore, the prohibition of article 5 e) is drafted such as to include not only the shape but also other characteristics which will be imposed by the nature of the product, which will be necessary to obtain a technical result and which will confer a substantial value to the product.
- - Relative grounds: specification of PDO and PGIs as relative grounds of refusal.
- - Reputation: The concept of well-known trademarks is eliminated from Article 8, while the concept of reputation is maintained benefiting from a higher protection. It will be irrelevant whether the goods and/or services involved are similar or dissimilar. An identity or similarity between the signs will be enough provided that an unfair advantage is sought or that the use of the latter sign is detrimental to the reputation or the distinctive character of the prior trademark.
- - Rights conferred by the registration: the registration of a trademark does not confer on its owner immunity from infringement actions. Contrary to the past, it will no longer be necessary to cancel the later infringing trademark prior to initiating an infringement action.
The specific cases on which the TM owner may prohibit the use of the later mark are specified in Article 34 including the right to use the sign in violation of Directive 2006/114CE on Comparative Advertising.
- - Goods in transit: The TM owner may seek an injunction against goods brought into Spain from third countries even when they are not released for free circulation in Spain.
Nevertheless, this will not apply where the owner of the goods of the declarant proves that the registered TM owner is not entitled to stop the marketing of the goods in the country of destination.
- - Intervening right as defense in trademark infringing proceedings: The so-called intervening right of Article 16 of the TM Directive has been introduced in the Spanish Law as a mean of defense for the proprietor of a later registered trademark in infringement proceedings in Article 44 bis.
The TM proprietor shall not be entitled to prohibit the use of a later registered trademark where the junior trademark could not be declared invalid as a result of:
- limitation in consequence of acquiescence
- the earlier mark was not distinctive or did not have a reputation
- the earlier trademark would have been subject to a non-use revocation action
This defense will require reverting to a point in time prior to the filing of the infringement action and will make it necessary for the parties to assess whether it is possible for the defendant to rely upon one of these defenses and if there is evidence in support thereof.
- - Licensee rights: the licensee may only bring an action for trademark infringement with the proprietor’s consent. Nevertheless, the exclusive licensee will be entitled to bring an action if the trademark proprietor has failed to do so after having been asked by the licensee.
Furthermore, the licensee may intervene in proceedings initiated by the trademark proprietor to obtain compensation from the infringer.
- - Use of the mark: Article 39 introduces the possibility of requesting evidence of use in opposition proceedings provided that the prior mark has been registered for more than five years. Furthermore, the possibility of requesting evidence of genuine use will also be foreseen in invalidity and revocation proceedings before the Office.
In this respect, the obligation of providing evidence of use in opposition proceedings will only enter into force when the Implementing Regulation will be published and enter into force.
The proceedings before the Spanish Patent and Trademarks Office will, after the amendments introduced by the Royal Decree, be harmonized and in line with the EUIPO proceedings.