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Approval of the Draft Law amending the Spanish Trade mark Law

Few changes to the Spanish trade mark Law are coming up in order to implement the Directive (EU) 2015/2436 to approximate the laws of the Member States relating to trade marks.

The Council of Ministers has recently approved the Draft Bill for the Amendment of the Spanish Trade marks Law, which foresees its entry into force, for most of the changes, on January 14, 2019. Nonetheless, the date of entry into force may vary during the parliamentary procedure for the final approval of the Amended Law.

Although the date on which the changes will finally begin to be applicable is uncertain, we set forth below the most relevant changes, separated into three blocks.


Complications during the opposition process?

No doubt there will be some new issues for the opponent. Under the amended law, the applicant of a new trade mark who receives an opposition will be able to request the opponent to prove that the earlier trade mark on which the opposition is based has been genuinely used in the market during the 5 years prior to the new trade mark’s application date, provided that, on that date, the earlier trade mark had been registered for more than 5 years. The lack of evidence of genuine use will lead to the dismissal of the opposition, or to its continuance only for the products/services in relation to which evidence of use had been provided.

The amended law stipulates that also trade mark licensees will be entitled to submit opposition.

Where will cancellation or invalidity actions be submitted?

These actions, that until now had to be submitted before the Tribunals, will become direct competence of the Spanish Patents and Trade marks Office (OEPM), and so invalidity and cancellation actions (due to lack of use, or relative grounds, etc.) will have to be submitted before the OEPM directly. The exception will be when these actions are raised by the defendant as a counterclaim within trade mark infringement proceedings.

This last change will come into force 4 years later than the rest.


Who can be the owner of a trade mark?

The eligibility to own a trade mark will be extended to any natural or legal person, regardless of their nationality, residence, etc.

What can be a "trade mark"?

The graphic representation will no longer be a requirement and, theoretically, any sign that can be represented by any technology, such as smells or sounds, will be eligible for trade mark registration. However, the requirement that the sign must be clear, precise, self-sufficient, accessible, intelligible, durable and objective will undoubtedly make it difficult to register these new types of trade marks.

Well-known or renowned brands?

The difference between well-known and renowned trade marks disappears and only the concept of a renowned trade mark will remain. A trade mark will be renowned if it is proven that it has a reputation in Spain (if it is a Spanish trade mark) or in the European Union (if it is a European Union trade mark).


Blocking of infringing goods in transit

The owner of a trademark will be able to act against goods that come from third countries if they feature an identical sign to their trademarks, even if these goods are in transit through the Spanish market and this country is not their final destination. However, if the owner of these goods proves that, in the country of destination of the goods, the owner of the relevant trademarks does not have registered rights that allows him to prohibit its commercialization, then the right of the owner to act against these goods will decline.

Limits to trademark law 

On the one hand, the owner of a trademark will be allowed to prevent a third party from using, with immunity, a similar sign as a commercial name or company name in the market, when this could infringe its trademark, except if it is the name of the natural person and provided that it is used in accordance with honest practices in industrial and commercial matters.

On the other hand, the possibility that a trademark owner invokes his trademark rights to be exempted from liability for infringing third parties prior IP rights (whether trademarks or any other right) is expressly removed. That is to say, having a registered trademark may not protect the activity of its owner if it infringes the previous trademark (or other rights) of a third party.

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