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January 29, 2024

First year of administrative nullity and caducity of distinctive signs 

Last Sunday 14 January marked one year since the entry into force of the latest amendment to Law 17/2001, of 7 December, on Trademarks stemming from the transposition of Directive (EU) 2015/2436 of the European Parliament and of the Council, of 16 December 2015, on the approximation of the laws of the Member States relating to trademarks.  

Until 14 January 2023, Spain was one of the few EU member states where nullity and expiration proceedings for registered distinctive signs could only be brought before the Courts.  

Since then, the Spanish Patent and Trademark Office (SPTO) is the competent body to declare the nulliity and expiration of Spanish trademarks directly, although the civil courts maintain their jurisdiction by way of counterclaims.  

In other words, an interested third party wishing to request the invalidity or revocation of a distinctive sign must file its application with the SPTO, unless it files a counterclaim as a defendant in infringement proceedings before the civil courts.  

The grounds on which applications for invalidity or revocation may be based remain the same:  

  • Nullity: a distinction continues to be made between:  

    Absolute: which may be based on (i) any of the absolute grounds in Article 5(1) of the Trademark Act or (ii) bad intention on the part of the applicant at the time of applying for the challenged trademark; or

    Relative: which may be based on any of the relative prohibitions contained in Chapter III of the Trademark Act; and  
  • Expiration: which may be based on the grounds that the distinctive sign (i) has not been used in accordance with Article 39 of the Trademark Act; (ii) has become the usual designation in the trade of a product or service for which it is registered; or (iii) as a consequence of its legitimate use, is liable to mislead the public as to the nature, quality or geographical origin of the goods or services for which it is registered.  

The procedure before the SPTO begins with the filing of the application by the interested party and proof of payment of the corresponding fee. The applicant must also present the facts, evidence and allegations on which his request is based and, in the case of relative nullity, prove the existence of the prior right on which his request is based. Unsubstantiated applications shall be rejected.  

Once the application has been accepted for processing, the Office shall forward the application to the holder of the contested distinctive sign, who may reply and request, in the case of relative nullities, proof of use of the earlier right if the appropriate conditions are met.  

During the procedure, the SPTO may invite the parties to submit observations as many times as it deems necessary, bearing in mind that it has a maximum period of 20 and 24 months to resolve the expiration and nullity procedures, respectively. After this maximum period, the application for expiration or nullity would be deemed to be rejected by administrative silence.  

In the first 12 weeks of 2023, 110 applications for nullity or revocation had been submitted and, to give an approximate idea of the total number of applications in this first year, by 28 December, 219 notifications of transfer of the nullity or revocation had been published in the BOPI: 219 notifications of transfer of the application for nullity and initiation of the contradictory phase (169 for national trademarks, 8 for Spanish designations of international trademarks and 42 for trade names) and 176 notifications of: transfer of the application for expiration and initiation of the contradictory phase (158 for national trademarks, 12 for Spanish designations of international trademarks and 6 for trade names).  

The SPTO has already issued the first decisions in this type of procedure, but we will have to wait for some time to have a complete picture of the system and how it works and to be able to make an in-depth assessment of its pros and cons.  

In any case, in our opinion, the fact that these actions can be processed before the SPTO simplifies the procedures and reduces many of the formalities that continue to be necessary before the Courts. And, from the looks of things, everything seems to indicate that this modification is being well received by users. 

Article published by Menchu Pérez, 29-01-2024.

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