The Spanish Government intends to implement most of the changes of the Directive into national trade mark law ("Ley de Marcas") on 14 January 2019. Some of the changes (in particular those referring to administrative procedures - see below) will be effective as of 14 January 2023. The current draft of the new Spanish trade mark law ("Anteproyecto de Ley de modificación parcial de la Ley 17/2001, de 7 de diciembre, de Marcas") can be accessed here (in Spanish).
With the implementation of the Directive, the SPTO will have competence/jurisdiction to deal with invalidity/cancellation and revocation proceedings but not until 14 January 2023. From then onwards, the SPTO will have direct jurisdiction/competence to deal with these actions, as will the courts by means of counterclaims in trade mark infringement actions.
Likewise, exclusive licensees of any trade marks will be entitled to pursue these proceedings before the SPTO or the courts, provided they have the owner's authorisation.
If requested by the applicant, the opponent must provide evidence that in the five years prior to the filing or priority date of the contested application, the opponent's trade mark has been used, or at least that there are causes that justify a lack of use.
From now on, trade marks will renewed by merely paying the relevant fee. No formal application for renewal will be necessary.
The mandatory graphic means to represent signs will no longer be needed. Therefore, in order to make the clear and precise representation of the sign easier, the applicant will now be allowed to represent it in any way that is considered appropriate using generally available technology. This will allow, for example, representation by an audio file in case of sound trade marks.
The absolute grounds of refusal are not increased, although the Directive includes expressly a prohibition on registering the name of a previous plant variety as a trade mark, and those referring to designations of origin are systematised and reordered.
The new Spanish trade mark law (adopting the provision in the Directive) will allow trade mark owners to prevent third parties from introducing goods into the Member State in whose territory the trade mark is registered, without being released for free movement in that territory, where:
This right will be terminated if, during the procedure to determine if the registered trade mark was infringed (Regulation 608/2013), the declarant or the owner of the goods proves that the owner of the registered trade mark is not entitled to prevent the commercialisation of those goods in the country of destination.
Written by Jose Angel Garcia-Zapata