Important changes in the Spanish Trademark Law

On January 14th 2019, the Royal Decree of 21 December 2018 has came into force, by which the Spanish Trade Mark Act has been amended in some relevant aspects, following the transposition of the European Directive (EU) number 2015/2436, of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade mark. The goal of said amendment is to reduce the differences between the practices of Member States’ IP Offices in order to approximate all Member States law to the European regulation.

The amendments presented by the Royal Decree can be summarized as follows:

1. The graphic representation requirement disappears:  there will be no need for a trade mark to be represented by graphic means. It will allow easier registration for not traditional trade marks such as hologram, sound or smell trade marks, in line with Singapore Treaty of 2006.
2. The option for the applicant to request proof of use of the earlier trade mark: this change presents a new stage in the adversarial proceedings before the Spanish Spanish trademark office (OEPM) where the applicant may request to the opponent the proof of use during the last 5 years, provided that the earlier mark has been registered before January 2014. This change will be effective once the implementing regulation will enter into force.
3. Stricter protection of both designations of origin and geographical indications: The prohibition by which trade marks considered incompatible with designations of origin or geographical indications cannot be registered, will be of both absolute and relative nature to ensure it is a reason which can be pleaded through opposition proceedings but also ex oficio refusal.
4. Broad entitlement to apply for Spanish trade marks: any natural person or body corporate will be entitled to register a Spanish trade mark, regardless their nationality, residence, or international treaties which grant them such right.
5.  Renowned brands vs. notorious brands:The concept of renowned brands will be the one in force, whilst the concept of notorious brands disappears from the Spanish trade mark Act.
6. A change in the jurisdiction: The Spanish IP Office will be competent to decide on both absolute and relative grounds of refusal, setting up new time-effective administrative proceedings for invalidity and revocation actions. The competence of the Spanish IP Office will apply by 14thJanuary 2023.

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