On 14 January 2019 the reform of the Spanish Trademark Act 17/2001 will come into force, since it was amended in view of harmonising it to the Directive (EU) 2015/2436.
Although one of its most significant changes will not become effective until 14 January 2023, which consists in the Spanish Patent and Trademark Office having competence in the procedure and rendering of administrative decisions concerning invalidity and revocation due to lack of use of registered trademarks, the remaining modifications concerning filing, opposition and renewal proceedings of trademarks and trade names, and also concerning the scope of the rights conferred by the registration, will apply. The most significant of these changes are explained below.
The legitimate interest right to apply for a registration is open to any legal or natural person and it has been adopted that the trademarks must be signs capable of being represented but not necessarily by graphic means; this possibility is extended to other means (sound, video, holograms).
The absolute prohibitions to register are better specified concerning designations of origin, geographical indications, traditional terms for wine and traditional specialities guaranteed. The same would apply for the designations of vegetal varieties. Moreover, the PDO or the PGI can also be invoked as relative prohibitions.
The concept of well-known character and its degrees disappears and the concept of reputation remains, which requires the knowledge of the trademark not only by the consumers in its market sector but also by the general public. The protection of the trademark with reputation is the object of a special protection: in order to validly contest the use or registration of a new application, it is irrelevant if there is or there is not a similarity in the goods or services as it suffices that there is an identity or similarity between the signs and that an unfair advantage is sought or that the use of the sign is detrimental to the reputation or distinctive character of the trademark.
The regulation concerning the legitimate interest right to file oppositions has been specified and in some cases it is extended to licensees. But the essential change in opposition proceedings is indeed that the applicant is entitled to claim that the use of the opposing right be proved if it is more than five years old. In the absence of proof of consistent use, the opposition will be rejected straightaway in whole or in part.
The rights conferred by the registration have been delimited and extended. The ius prohibendi deriving from the registration is without prejudice to the rights that have been acquired by the owners at a date earlier than the application or priority of the registered trademark. On the contrary, the right to an immunity use of the sign registered as a trade name or company name has been deleted and is reserved only to the name or address of the natural persons.
Finally, it has to be underlined that the new regulation also carries a strengthening of the attributions of the registered trademark owners against infringements. They may prohibit direct infringement acts and also preparatory acts tending to such infringements. In the hard battle field of piracy and counterfeit, they may prohibit the transit and introduction into the country of goods that bear unauthorised identical or substantially identical trademarks, without the requirement of proving that they are intended to be marketed in Spain.
These are the most relevant amendments that have been adopted in the reform. They represent important changes in some technical and administrative aspects and also from a legal perspective because they are essential for the content, the scope and defence of the trademark holders’ rights having effects in Spain.
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