Partial modification of the Spanish Trademark Act 17/2001, of December 7

On January 14, 2019, the reform of the Spanish Trademark Act 17/2001, of December 7, came into force. It introduces several modifications in the Spanish legal system. The reform improves the filing and prosecution system of trademarks in Europe, bringing the provisions of material and procedural law closer to European regulation.

The most relevant modifications can be summarized as follows:

Material rules:

  • Legitimacy: is recognized to obtain the registration of a trademark for any natural or legal person regardless of their nationality, residence or their ability to the enjoyment of the benefits of certain international agreements. The legitimacy of the licensees to initiate trademark infringement actions is recognized. The consent of the owner of the trade mark is needed to initiate violation actions by the license. The license is allowed to initiate the action if, having requested the holder for it, the action has not been initiated. Any licensee is allowed to intervene in the trademark infringement proceedings initiated by the owner, to obtain compensation for the damages caused by the infringer.
  • Trademark definition: the requirement that it is susceptible of graphic representation is eliminated. It is only required that the sign be capable of representation in the Trademark Registry, but it is required that the trademark is represented in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.
  • The new Act incorporates the right of any legal person, which has not registered as a trade name their name or business name, to oppose the registration of a trademark or trade name subsequently requested or to claim before the courts their cancellation if they had already been registered, when these distinctive signs are applied to products, services or activities identical or similar to those for which said name or company name is used, provided that the priority use of the same is proven throughout the national territory and there is a certain likelihood of confusion in the public.
  • Absolute grounds for refusal: there are no substantial modifications. They are systematized with respect to geographical indications, traditional terms of wines and traditional specialties guaranteed by referring directly to the legal instruments of Union Law or national law. Likewise, a specific prohibition of access to the registration of signs consisting of or reproducing in its essential elements the denomination of a previous plant variety is introduced.
  • Well-known trademarks or trade names: the distinction between reputed and well-known trade mark or trade name disappears, providing for a single category, the well-known trademark in Spain, or in the European Union, if it is a EU trademark. Reinforced protection of well-known trademarks is regulated.
  • Relative grounds for refusal: a trademark cannot be registered if it incompatible with geographical indications Thus, it is attributed a double prohibition, which is qualified as an absolute and relative prohibition.
  • The proprietor of the trade mark shall also be entitled to prevent all third parties from bringing goods, in the course of trade, into Spain without being released for free circulation there, where such goods, come from third countries and bear without authorisation a trade mark incompatible with the trademark registered. Unless the owner of the goods or declarant certifies that the owner of the registered trademark has no right to prohibit the placing on the market of the goods in the country of final destination.

 

 

  • Limitation of the effects of a trade mark: (i) the use in the economic traffic of the trade name or corporate name is suppressed, restricting this freedom of use only to the name of the third party, where that third party is a natural person; (ii) the trademark right cannot be invoked to exempt the liability of the owners from the actions initiated directed against them as regards intellectual property rights with an earlier priority date.

Procedural rules:

  • Opposition procedure: (i) the legitimacy to file an oppositions is regulated in detail, distinguishing the opposition based on absolute or relative grounds; (ii) the licensees are legitimated to formulate oppositions; (iii) the applicant against whom the opposition is filed may require the opponent to prove the use of the previous trademark, or the existence of justifying reasons for non-use of it; (iv) Oppositions can be file based on several prior rights; (v) the opposition can be filed against some of the products or services.
  • Legitimacy: (i) to request for the nullity or revocation based on absolute grounds due to the non-use of a trademark, conversion of the trademark in the usual name of the product or if the trade mark is liable to mislead the public, fall on any individual or legal entity, the groups or bodies representing manufacturers, producers, service providers, merchants or consumers that have procedural capacity; (ii) in cases of nullity based on relative grounds, the legitimation corresponds to the holders of the previous rights on which the nullity is based.
  • Registration renewal procedure: in cases of total renewal of the trademark, the payment of the renewal fee constitutes an application for renewal.
  • Absolute and relative nullity grounds: the competent organism to declare the nullity of a trademarks is the SPTO, thus modifying the general principle contained in the spanish judiciary law that conferred that competence, exclusively, to the Courts of Justice. The Courts of Justice are competent to declare the nullity of a trademark when a counterclaim is filed with an infringement action.
  • Revocation of a trademark registration. As in the nullity, the general principle of direct competition of the SPTO for its declaration is established. The competence of the Courts of Justice to declare the revocation of a trademark when a counterclaim is filed with an infringement action is also established.
  • The limitation in consequence of acquiescence is regulated, excluding cases that affect the marks of agents or representatives.
  • Res iudicata: any counterclaim asking for the nullity or revocation of a trademark will be denied if the SPTO has already issued a final decision regarding the same question; applying the same criterion in the inverse case. The application for nullity by administrative or judicial means, by means of a counterclaim, will prevent the same owners from presenting a new claim for nullity based on another of them rights, provided that they could have alleged it in his first claim for nullity.
  • Regarding applications or actions for nullity or revocation, the requirement for evidence of use is regulated in detail at the request of the owner of the subsequent trademark, as well as the legal consequences of the total or partial non-use of the trademark.
  • Effects of the revocation of a trademark. Once the revocation of a registered trademark has been declared, its effect goes back to the date of the administrative application for revocation or the date of the counterclaim, as applicable, all without prejudice that the resolution or judgment that declares it establishes a previous date. The effects of the declaration of nullity are not modified.
  • Certification marks have maintenanced the “geographical origin” as the relevant characteristic of the products or services that, among others, can be certified with this type of trademark, although the definition leaves open the path of inclusion of “other characteristics” of the products or services.

 

  • Legitimacy of collective and guarantee marks. Regarding the collective mark, there is a reference to the legitimation of the licensees in the individual trademarks to use the trademark, assimilating those to them. On the contrary, in the guarantee marks only its owner or person authorized by him may initiate an action for violation of a trademark.

The First Additional Provision of the Trademark Act, which was modified by the Patent Act 24/2015, of July 24, is amended again, declaring applicable to the different modalities of distinctive signs the rules contained in the title XII of the Patent Act, to the extent that they are not incompatible with their own nature.

 

The entry into force of the direct competition of the SPTO regarding the applications for nullity and revocation of distinctive signs will be on January 14, 2023, so it has been included a transitory regulation for this issue. Until the SPTO is competent to declare the nullity or revocation of the distinctive signs, the civil jurisdiction will be competent, but the substantive rules that regulate the matter contained in the new Title VI of the new Trademark Act will be applicable.