December 7, 2022

The new Trademark Law is here. What do you need to know?

As part of our clients may already know, the modification of the Trademark Law regarding the administrative competencies of them Spanish Patent and Trademark Office (OEPM in Spanish)to decide on claims for invalidity/revocation of trademarks/trade names will come into force on January 14th, 2023. From this date, anyone who wishes to request the trademark revocation due to the possible lack of use, or wishes to request the invalidity due to the reasons already provided for in the very Trademarks Law, will have to address its claim to the Spanish Patent and Trademark Office itself. The origin of this change is in the approval of the European Parliament Directive (EU) 2015/2436, which aims to approximate the trademarks legislation of the Member States. The result is a less costly administrative procedure for the parties.

It is worth saying that until the OEPM acquires the powers to declare the invalidity or revocation of the signs, the corresponding procedures will remain the competence of the civil jurisdiction, but the substantive rules that regulate the matter, contained in the new Title VI of the Trademark Law, will be applicable.

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Obviously the modification also involves internal changes in the organization of the Spanish Patent and Trademark Office. Even so, the agents affected by the legislative change (such as Industrial Property professionals) expressed doubts about the coexistence of this new system with the civil jurisdiction powers for some cases as invalidities due to counterclaim in actions for infringement. That has caused subsequent reform to provide for the return of matters to civil jurisdiction through the possible appeals that could be filed against the decisions of the Spanish Patents and Trademarks Office in this matter. In this way, a trend towards jurisprudential consistency is facilitated, which would be more complicate if there is a need to resolve the requests as contentious-administrative.

The relevant novelties of the new Trademark Law

  • As a procedure before the Spanish Patents and Trademarks Office, the invalidity procedure will now allow the holder of the affected trademark to request proof of use of the prior trademark.
  • The administrative nature of the method itself, which will replace that followed in the Mercantile Court, has also implied a change in the evidence admitted: article 21 bis of the new regulation unequivocally establishes that: The proof of use will be limited to the presentation of documents and supporting elements such as invoices, catalogs, price lists, advertisements, packaging, labels, photographs, and relevant written statements.
  • It is also relevant that the new procedure excludes the tolerance prescription for trademarks registered by agents or representatives.
  • The effects of the revocation’s declaration are retroactive to the date of the claim, unless the resolution provides for an earlier date. This date would be set at the request of the claimant based on the date on which any of the causes of revocation occurred.
  • Concerning invalidity, the registered trademark whose invalidity is declared will be considered not to have had, from the beginning, the effects inherent in its registration. The mark is included practically verbatim in the case of expiry and invalidity, what is provided by regulation 2017/1001 on the European Union.

Trademark Law conclusions

Like any modification, the new trademark Law generates doubts in its practical application and about the possibility that it will produce new changes. An example is an opinion issued by several experts on whether, once there is a dismission of an appeal on the decision falling to opposition, the resulting request should be presented to the mercantile jurisdiction instead of the contentious-administrative one; such a possibility would seem to be in line with the goal of jurisprudential consistency that we mentioned above.

In short, it seems clear that the new trademark Law will achieve its main objectives to a large extent (the reduction of administrative costs, the revitalization of the register, the disappearance of not used brands, etc.), but the new procedures raised doubts that we cannot ignore, and we will not see if they resolve until they come into operation.

Article by Jaume Layola