Brand Owners News

Trademark invalidity and revocation proceedings will be processed directly before the OEPM from 14 January 2023

One of the most relevant changes brought by the Royal Decree-Law transposing Directive 2015/2436 on trademarks published the 27th of December 2019, directly affects nullity and revocation proceedings. In this article, we will discuss this jurisdictional modification.

By means of this measure, which will enter into force the 14th of January 2023, actions for invalidity and revocation of Spanish trademarks, which had been brought before the civil courts, will now fall under the exclusive and direct jurisdiction of the Spanish Patent and Trademark Office (SPTO). In this sense, the courts will only have jurisdiction in trademark infringement proceedings via counterclaims.

Thus, in just a few months, trademark invalidity and revocation actions will be brought directly before the SPTO, becoming purely administrative proceedings. Once the Office resolves the action, the administrative procedure will be exhausted and it will be necessary to appeal, where appropriate, before the civil courts. This is a major new development for professionals involved in the protection of third-party trademark rights.

The invalidity of an intellectual property right is equivalent to the fact that this right never existed because it should not have been granted. Thus, the purpose of an invalidity action is both the cancellation of a registered sign and the loss of the rights associated with its registration.

In this regard, there are different grounds for an invalidity action in Spain, for example, that the trademark in question is identical or similar to an earlier mark, or that the registration has been made in bad faith on the part of the applicant.

On the other hand, revocation means that the right is "extinguished" because some of the obligations required by law are not fulfilled, for example, when the trademark is liable to mislead the public or when the sign has become the usual designation of a product or service for which it is registered. However, one of the most common grounds for revocation is the non-use of a trademark.

In order to prevent signs that are not being used in the market from hindering the registration of new trademarks and to avoid unjustified monopolies of use, the owner of a registered trademark has a duty to use it. Otherwise, if a trademark is not used for an uninterrupted period of five years, it is liable to be cancelled for non-use.

The main objective of this regulation is to harmonise national legislation with that of the European Union. Currently, the procedures for the invalidity and revocation of EU trademarks are processed by the European Union Intellectual Property Office (EUIPO) and not by the courts.

Beyond the doubts that this modification is raising, it seems coherent that the offices themselves should be the ones to resolve these procedures, as they are specialised bodies in Industrial Property matters, thus avoiding the risk of encountering divergent judicial interpretations.

In this new scenario, the specialised sections of the Courts of Appeal will be competent to rule on appeals against all decisions of the SPTO, including those relating to the invalidity and revocation of trademarks.

In light of the above, Bird&Bird will be happy to answer any questions that may arise in relation to this new development, as we are more than ready to defend trademark owners in this new framework of proceedings before the OEPM from January 2023.

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