Reform of the Trademarks Act in Spain
On December 21, 2018, the Council of Ministers approved by Royal Decree-Law 23/2018 the partial amendment of Trademarks Act 17/2001, with the purpose of transposing Directive (EU) 2015/2436, of December 16, 2015, relating to trademarks.
In line with the current EU trademark law, the following changes can be outlined:
• “Graphic” representation of the sign is no longer required. This will allow adapting the formats in which to represent the signs to(of) the technology available at each moment.
• Some registration prohibitions related to designations of origin, traditional wine terms, guaranteed traditional specialties and denominations of plant varieties are more systematically established.
• The well-known trademark or trade name category is removed. Only trademarks (and trade names) that are renowned in Spain (or in the EU, for European Union Trademarks) will have reinforced protection.
• It is established the capacity of the licensees to be able to lodge oppositions or enforce actions related to the trademark infringement.
• As part of the opposition procedures, there is the possibility of requesting the opponent to furnish proof of its previous rights’ use, or that there are proper reasons for non-use, if the temporary conditions for this are met, as well as the consequences thereof in the opposition. This modification will come into force when new specific rules will be developed by the Government.
• The SPTO will have the competence, shared in certain cases with the Courts of the civil jurisdiction, to resolve the revocation and declaration of invalidity of the Spanish trademarks and trade names. This modification will become effective in January 2023.
The modifications will come into effect on 14 January 2019, with the aforementioned exceptions that will come into force later.
The full content of the amending Act can be seen in the Official Gazette of 27 December 2018.