December 10, 2018

Upcoming entry into force of amendments to Spanish Trademark Law 17/2001

The amendments to Spanish Trademark Law 17/2001 adapting the (EU) Directive 2015/2436 on Harmonization in Trademark Matters will enter into force on January 14.

The new text introduces important improvements in substantial aspects of the management and defence of the trademark for the benefit of the owners, some of which will have a phased deployment in coming years and on whose evolution we will keep you informed in a timely manner.

Among the most relevant changes, new procedures are introduced for the invalidity and cancellation of trademarks in the administrative phase without the need to start legal proceedings, thus avoiding the delays and costs they generate. The introduction of the mechanism of proof of use for the proprietor of the earlier trademark in opposition proceedings against new applications is also noteworthy.

The introduction of the proof of use replicates the provision that was already being applied in European Union Trademark proceedings before the EUIPO and means that the owner of the earlier trademark, in an opposition procedure, may be required to prove the effective use of the trademark in the immediately preceding 5-year period, provided that its registration date is equal or previous to that period. This mechanism will undoubtedly provide greater legal certainty to our trademark system and will improve the adjustment between the market and the registration reality.

The new text is still pending regulatory development, which will provide more practical details of its implementation. As soon as this is produced we will inform you. If in the meantime you need more information, please do not hesitate to contact us at ponti@ponti.pro or by telephone at +34 934 874 936.