Since January 2023, holders of prior rights and other interested parties have had a more direct alternative for requesting the cancellation or revocation of trademarks and trade names registered in Spain. It is now possible to file nullity and revocation proceedings with the OEPM (Spanish Patent and Trademark Office)! This institution has officially assumed jurisdiction to resolve these cases, which were previously the exclusive jurisdiction of the civil courts.
This is undoubtedly a significant development. Instead of necessarily going to court, interested parties can now pursue these actions through administrative channels, provided that they do not involve a counterclaim in the context of an infringement lawsuit. This change not only reduces the complexity of the process but also facilitates access to more agile mechanisms for the defense of trademark rights.
Nullity and revocation at the OEPM: simplification and procedural clarity
In fact, one of the most significant changes has to do with how applications for nullity and revocation are handled at the OEPM. As a result of this reform, these procedures are now conducted entirely in writing, without the need for in-person hearings. This is a great advantage for those who wish to resolve disputes without having to face the time, costs, and formalities of the traditional judicial system.
Specifically, the OEPM may declare the expiration of a trademark if more than five years have passed since it was registered without it having been put to genuine and effective use in the market, provided that there is no justified reason for such inactivity. It is also possible to request revocation if the trademark has lost its distinctive character and has become a generic name in commerce, or if it has acquired a misleading character.
In particular, the nullity procedure allows for the challenge of registers that violate absolute prohibitions, such as lack of distinctiveness, descriptive character, or contravention of the law or public order. Or, that violate relative prohibitions. For example, when a trademark is identical or similar to another previously registered trademark, or even when it is proven that the applicant acted in bad faith.
Legal basis and scope of invalidity and revocation proceedings at the OEPM
These changes are based on Royal Decree-Law 23/2018, which transposes Directive (EU) 2015/2436 on trademarks into Spanish law. Incidentally, thanks to this legislative update, the OEPM also acquires the power to examine issues that were previously exclusively judicial, such as applications filed in bad faith, thus granting the body greater scope for control.
The resolution of nullity and expiry proceedings at the OEMP has a defined time frame: 24 months for nullity actions and 20 months for expiry actions. This is established in the Fifth Additional Provision of the Trademark Law. Of course, this predictability is key for companies and professionals seeking to protect their interests without facing prolonged delays.
Costs, representation, and evidence for nullity and revocation proceedings at the OEMP
One of the most striking aspects of the new nullity and lapse proceedings at the OEPM is their accessibility. In fact, it is not necessary to have the signature of a lawyer or the intervention of an intellectual property agent or attorney. However, it is always advisable to seek specialized advice—such as that offered by ISERN—to maximize the chances of success.
In terms of costs, an administrative fee of €200 is required, to which the fees for preparing the claim would be added, if applicable. Furthermore, there is no provision for the award of costs or the possibility of claiming damages within this procedure.
Another important detail: there are no oral hearings before the SPTO. In this regard, the evidence is essentially documentary and must be submitted in full at the time of filing the claim and the reply. Only if the procedure is appealed before the provincial court could a hearing be held, but this would be outside the strictly administrative sphere.
Evidence, a key element in actions for bad faith and conflict with priority trademarks
One of the most complex aspects of nullity and expiry proceedings at the SPTO is the management of evidence. This is especially true in cases where it is alleged that a trademark was applied for in bad faith or that it conflicts with prior rights.
In the first case—nullity due to bad faith—the Office must evaluate the applicant’s behavior at the exact moment when they applied to register the trademark. This requires going back in time and analyzing whether there was an intention to take advantage of the reputation of others, hinder the legitimate use of a prior trademark, or engage in any other unfair competition. The OEPM will then use the criteria established by the Court of Justice of the European Union, adding a component of specialized legal analysis to the file.
It should be noted that, although the OEPM was the body that initially granted the register, it may now also be the body that cancels it, after assessing these elements. This reinforces the principle that trademark register is not irrevocable and may be lost if it is proven that its granting violated the legal framework or the rights of third parties.
Nullity due to conflict
On the other hand, in actions for conflict with priority trademarks, the party initiating the proceedings must prove two fundamental issues:
- That it has effectively used its trademark during the five years prior to the filing of the lawsuit.
- Also, that it has used it during the five years prior to the time when the contested trademark was applied for.
This may mean submitting evidence of use dating back a decade or more. Therefore, in anticipation of such circumstances, holders of prior rights should keep meticulous and well-archived documentation.
If such use cannot be proven, the OEPM will dismiss the claim. Thus, the burden of proof rests entirely with the party seeking to assert its prior right, making documentation and dates critical elements of the proceedings.
Review of decisions: appeals and legality control
As with any administrative procedure, decisions made by the OEPM regarding nullity or expiration can be appealed. First, it is possible to file an appeal with the Office itself, which allows for an internal review of the initial decision.
However, if the applicant is not satisfied with this review, they can go to court, specifically to the specialized intellectual property sections of the Provincial Courts of cities such as Madrid, Barcelona, Valencia, Granada, La Coruña, Bilbao, and Las Palmas de Gran Canaria. In this way, it is possible to ensure that the most complex decisions can be reviewed by judges with experience in this area.
The legal framework for these appeals is set out in Article 447 bis of the Civil Procedure Act. This specifically regulates challenges to OEPM decisions. Unlike a traditional contentious-administrative appeal, this route seeks not only to declare the administrative act invalid, but also to actively protect the rights of the claimant.
Consequently, if the challenge is upheld, the court may order the annulment of the OEPM’s decision. Depending on the case, it may even decide to grant a new trademark, cancel it, modify it, or maintain it. In this way, it restores the balance between the parties and guarantees effective judicial protection.
What happens if the defendant is a foreigner?
In an increasingly globalized world, it is not unusual for claims for invalidity or revocation to be brought against foreign owners. To this end, the regulations simplify the procedure: it is not necessary to translate the claim into the defendant’s language.
The notification is made through the intellectual property agent designated by the owner in their application or, failing that, it is sent to the address provided when registering the trademark or trade name in Spain. This measure seeks to avoid bureaucratic obstacles and facilitate efficient processing, even in transnational cases.
Do you need to initiate nullity or revocation proceedings at the SPTO?
As you can see, the new administrative framework greatly facilitates the filing of nullity and revocation requests at the SPTO. This measure eliminates many of the steps that were previously part of the traditional judicial process, such as the preliminary hearing or the oral trial. This simplification provides an opportunity to assert your rights more quickly and efficiently.
Even so, we know that each case is different and that many questions may arise about how to prepare the documentation, what evidence to file, or how to act in the event of an unfavorable decision. At ISERN Patents and Trademarks, we have more than a century of experience defending our clients’ interests in intellectual property matters, both in Spain and abroad. Our team of specialists will accompany you throughout the process: from the feasibility analysis to filing the application or lodging the corresponding appeal.
If you need advice on nullity or expiry proceedings at the SPTO, or if you wish to challenge a decision, we are at your disposal. We look forward to seeing you at any of our 12 offices or you can contact us using the following form.