On Wednesday, May 1, 2019, most of the amendments to the Trademarks Regulation, officially identified as the Spanish Royal Decree 687/2002, of July 12, approving the Regulation for implementing the Law 17/2001, of December 7, of Trademarks, came into force.
The changes were published through the Spanish Royal Decree 306/2019 on April 30, 2019 in order to adapt it to the modifications recently suffered by the Trademark Law by incorporating Directive (EU) 2015/2436 (see news in our web: http://www.zbm-patents.eu/zbm/reforma-de-la-ley-de-marcas-en-espana/).
Among the procedural changes introduced, it is worth highlighting the following:
- In opposition proceedings the means is available to request the opponent to prove the use of his earlier rights, or the justifying reasons for his non-use, if the temporary conditions for it are fulfilled, as well as the consequences that all this will have in the opposition. This option will be available for the trademarks object of opposition that have been filed as of May 1, 2019.
- The request for proof of use must be presented “formally and expressly in a separate document and unconditionally” within a period of 1 month granted to answer the office action. The period for the presentation of the proofs of use or the justification for non-use will also be for a period of 1 month.
- It facilitates the process of accreditation of a right of priority claimed, as well as the previous rights in the case of oppositions or applications for invalidity or revocation, if those rights are in databases accepted by the OEPM, free and in Spanish.
- The procedure to obtain the renewal of the registration of a trademark or trade name in the case of a total renewal is streamlined. The issuance of the certificate confirming the renewal is maintained.
- It establishes the requirements for the application at administrative level of the invalidity and revocation of trademarks and trade names, as well as their processing, although these procedures will not come into force until January 14, 2023.
The complete content of the reform can be found in the BOE dated April 30, 2019. https://boe.es/boe/dias/2019/04/30/pdfs/BOE-A-2019-6345.pdf