Starting 14 January, applications for the invalidity and revocation of Spanish trademarks, trade names or international trademarks with effect in Spain must be submitted to the SPTO, except in the case that the counterclaim is used in a legal proceeding previously lodged for infringement. Therefore, the Spanish Patent and Trademark Office will be the competent body responsible for resolving claims of this type.
Moreover, it is important to add that the decisions concluding the administrative process of this body will no longer be reviewed by the contentious-administrative jurisdiction, but by the specialised sections of the provincial courts.
Two important legislative amendments that will have a clear impact on both trademark holders and new applicants.
As regards the new administrative invalidity proceedings for distinctive signs, these new powers mean that the Office can cancel already granted trademarks if they were granted in violation of absolute registration prohibitions, such as bad faith, or relative prohibitions, such as the likelihood of confusion and/or association or damage to the reputation of a priority trademark. As such, this Office will be required to carry out a retroactive analysis on the date of application or priority of the trademark in question.
In some cases, it will also be necessary to take into account subsequent circumstances, such as the use made by the trademark holder which may have affected the distinctive character of the sign, since this circumstance may have changed since the date of the initial application.
With regard to revocation,the most common cases to be discussed before the SPTO are those related to trademarks that have been registered for more than five years and where there are doubts as to whether they have been put to genuine use, although we must not forget that cases of popularisation or cases in which the trademark has become a misleading sign may also be assessed.
In other words, an important list of issues with a decisive impact on the registration and effectiveness of distinctive signs for which the Office has already made an informative manual available to the public, said manual which also indicates that it has been prepared for this new task by training specialised personnel.
Therefore, as in the case of the EUIPO with regard to European Union trademarks, there will be an administrative proceeding that will allow us to obtain the declaration of revocation or invalidity of a trademark as required by Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to the Member States, which is expected to be faster than the judicial proceeding, although maximum terms of up to 24 months, which we hope will be significantly shorter and more accessible, are being considered.
In any case, even if it is an administrative proceeding, it is still advisable that an industrial property agent/specialist attorney provide assistance from the very start given the importance of these matters.
Regarding the new judicial review system for decisions taken by the SPTO, apart from the doubts that still persist about the proceeding itself, it is important to highlight the positive effect that it should have on the unification of jurisprudential criteria by eliminating possible different interpretations by the civil and contentious-administrative jurisdictions.
In fact, said reform is justified both by the high degree of experience in industrial property had by the specialized Sections of the Provincial Courts and by the desirability of avoiding different jurisprudential criteria in this matter, thus favouring the principle of legal certainty.
In short, it is a challenge that we must adapt to in order to defend the interests of our clients with two additional recommendations: (i) carry out a review of the distinctive sign portfolios in order to assess their weaknesses and strengths and (ii) prepare both the proof of use of the signs that have been in existence for more than 5 years and proof of their reputation in order to be able to enforce it if necessary.
Head of Trademarks and Brand Intelligence