On Monday, January 14, 2019 the reform of the Spanish TM Law 17/2001 entered into force, following its harmonization to the Directive (EU) 2015/2436.
The Royal Decree 23/2018 of 21 December has basically introduced the following amendments:
1. Entry into force 14 January 2019:
- Right to apply for registration: any natural or legal person, regardless of nationality or place of residence or establishment, may apply for a trademark or trade name.
- Representation of the distinctive sign: it is admitted that the representation of the sign can be done by any means that allows to determine the clear and precise object of the protection granted. To these effects, it is enabled that such representation can be made by means of audio files (MP3) and video files (MP4) for certain types of signs. It is a significant improvement that will allow the filing of unconventional signs. It is also allowed the option to claim the distinctive character by use.
- New wording of absolute grounds prohibitions in Article 5: The scope of the prohibition in paragraph e) is extended to any type of distinctive sign by making express reference to "the shape or other characteristic" that gives a substantial value to the product. The prohibitions relating to the protection of designations of origin and geographical indications, traditional terms for wines, traditional specialities guaranteed and plant varieties respectively are reworded.
- Renowned or reputed trademarks: the category of well-known/notorious trademarks as such disappears and from now on there will only be the trademark with reputation that requires the knowledge of the trademark not only by the specific market sector but also by the general public. It remains to be seen how the concept of the trademark with reputation will be interpreted from now on, and whether the old notorious trademarks will have a room in it.
- A solution is given to a question not provided for in the previous legislation, such as the right of licensees to lodge an opposition.
- The ius prohibendi deriving from the registration is without prejudice to the rights that have been acquired by third parties at a date earlier than the application or priority of the registered trademark.
- The proprietor of a registered trademark is also granted the right to exercise the protection conferred on him by that trademark against goods coming from third countries which, although not having been released for free circulation, bear a sign identical or virtually identical to that registered trademark. The requirement of proving that they are intended to be marketed in Spain disappears.
2. Entry into force when the amendment to the Regulation for the implementation of Law 17/2001 on Trademarks is approved:
- Proof of use within the framework of the opposition to registration: it will enter into force only in respect of those applications for registration filed as from the entry into force of the rule that regulates the processing of the proof of use. As in the case of EUIPO, it is positive that the Spanish trademark applicant may require proof of use of opposing trademarks registered more than five years ago.
3. Entry into force on 14 January 2023:
- Direct administrative competence of the SPTO to process invalidity or cancellation actions of trademarks or registered trade names. Although it will still take time to enter into force, this will avoid having to go to the Spanish courts to invalidate a mark for absolute or relative grounds, or to cancel it for lack of use. It will save a lot of costs for the users of the system.
The newly established Trademark & Design Group of our Madrid branch office HOFFMANN EITLE SLU will be pleased to advise you on any question related to the Spanish market, both on an administrative and judicial level.