The reform of the Trademark Law entered into force in Spain on January 14. The modifications that are incorporated shall affect both new trademark applicants and those who already own one. Therefore, from PONS IP, we have summarized the new Law in ten key points to understand what this reform consists of and what trademark owners should take into account from now on.
1. Why the Law is Amended
The changes introduced in the Trademark Law respond to the need to adapt Spanish legislation to Directive (EU) 2015/2436 which includes numerous modifications in the field of trademark protection. Its main objective is to optimize trademark application and registration procedures throughout the European Union, to increase legal certainty and to promote the coexistence and balance between national trademark systems and those of the EU.
2. The requirement for “graphical representation” disappears
One of the most significant changes is that the requirement for graphic representation has been removed, which until now had been a condition for any trademark to be accepted by the Spanish Patent and Trademark Office (SPTO). This means that any distinctive sign that can be clearly and precisely reproduced shall be eligible for protection. This change broadens the spectrum of non-conventional trademarks that can be registered in Spain, such as color trademarks, holograms, sound and movement trademarks, shape and position trademarks; a whole range of possibilities to protect distinctive signs that appeal more strongly to the perceptions that clients have about their trademarks.
3. Introduction of “proof of use” in opposition proceedings
One of the most striking changes is the one affecting the opposition procedure, proceeding through which registered trademarks oppose the registration of similar or identical distinctive signs. From now on, the new applicants shall be able to require those who oppose their registration to prove a genuine and current use of the trademark in question (provided that it has been registered for at least 5 years). If the opponent cannot prove such use or invoke any justifiable cause, the opposition shall be rejected.
4. The distinction between “notorious trademark” and “well-known trademark” disappears (and all will be renamed from now on)
The New Law has eliminated the distinction between these two very special types of trademarks, unifying them under “well-known trademark”. Such trademarks should be highly known and shared among the public, which allows their owners, among other things, to oppose applications for trademarks identical or similar to their own, even if they designate different products or services.
5. Tougher measures against piracy
The reform gives trademark owners the possibility of preventing the introduction into Spain of goods from third-countries containing a sign identical or virtually identical to their own; all without requiring, as hitherto, that the products in question be marketed here, which means a significant strengthening of protection against acts of piracy.
6. Open legitimization system
Since January 14, any individual or legal entity can apply for the registration of a trademark or trade name in Spain regardless of circumstances related to their nationality, residence or international agreements.
7. Greater protection for protected designations of origin and geographical indications
The protection of geographical indications (PGI) and designations of origin (PDO) is reinforced by this Law; applications for trademarks identical or similar to that of a PGI or PDO by a third-party may be refused by the SPTO both on absolute and relative grounds of refusal through the filing of the corresponding opposition.
8. Restrictions for trademarks including plant variety denominations
The reform introduces a specific prohibition on the registration of trademarks consisting of or reproducing the denomination of a plant variety which clarifies and reinforces the conditions for its protection against attempts to register subsequent trademarks.
9. New competencies for the SPTO
The Law confers direct jurisdiction on the Spanish Patent and Trademark Office in matters of trademark nullity and revocation. This means that this office may declare any trademark already registered null. This is a matter that, until now, had been fixed by the competent courts in almost all cases, and this change shall therefore speed up this type of procedure and significantly reduce its cost. However, we will have to wait until January 2023 for this point of the reform to enter into force. or expired.
10. Recommendations for trademark owners and new applicants
The new system adds, in short, some measures that can aid with the registration and protection of distinctive signs in Spain, which is an excellent opportunity to take the step to register our trademarks. On the other hand, and for those who are already owners, we recommend a complete and exhaustive audit of their trademark or trademark portfolio, which shall allow them to detect any possible divergence between registrations and their uses in order to facilitate the consolidation of their distinctive signs. This audit makes it possible to detect the new protection opportunities offered by the new Law, especially in relation to non-conventional trademarks.