As we had anticipated, on 14 January 2023, the new procedures for the invalidity and revocation of Spanish trademark registrations in administrative proceedings that were established in the reform approved in 2018 of the Trademark Act 17/2001, of December 7, 2001 came into force.
It will therefore be the Spanish Patent and Trademark Office (SPTO) that will have direct jurisdiction to hear nullity and revocation proceedings for trademarks registered in Spain. The civil courts continue to have jurisdiction by way of counterclaim, in the framework of an action for trademark infringement.
The SPTO has adopted the necessary organisational, technological and training changes to face this new challenge, which is by no means a trivial task, as it involves taking on responsibility for proceedings and resolutions which, until now, were the exclusive competence of the civil jurisdiction.
Thus, by means of these new procedures, the SPTO will hear and resolve applications for the invalidity and revocation of trademarks, as well as trade names and international trademarks, all of them with effects in Spain. This competence is analogous to that already held for many years by the European Union Intellectual Property Office (EUIPO) in relation to European Union Trademarks.
Another major new development deriving from this reform is that appeals against decisions of the SPTO that put an end to administrative proceedings will fall under the jurisdiction of the civil courts and not the contentious-administrative courts. This is established in Organic Law 7/2022, of July 27.
We will be keeping an eye on any further developments in this area, hoping that the changes will serve to facilitate this type of procedure without having to go to court from the outset, with the consequent advantages that this may entail: speeding up processing through a more expeditious administrative procedure; having the option of an administrative procedure with lower costs than legal action and, last but not least, unifying criteria with specialised staff, in line with existing European case law.