On 14 January 2019 comes into force the new Trade Marks Act in Spain according to Royal Decree Law 23/2018 approved by the Council of Ministers on 21 December.
The objective of this legal reform is to harmonize and adapt the Spanish regulations to the Directive of the European Union, a transposition of the rules that must be carried out by all member states.
On 14 January 2019 comes into force the new Trade Marks Act in Spain according to Royal Decree Law 23/2018 approved by the Council of Ministers on 21 December and published in the BOE on the 27th of the same month. The objective of this legal reform is to harmonize and adapt the Spanish regulations to the Directive of the European Union. Therefore, it is necessary to transpose the rules of this directive into the legal systems of the EU Member States.
The new law enters into force on 14 January 2019, except the competence of the OEPM to decree by direct means the nullity or expiration of trade marks, which has been established for four years later, on 14 January 2023.
- More innovation to create new trademarks
The formal requirement of « graphic representation » is replaced by a representation through which the object of protection can be determined in a more clear and precise manner. This change favours the innovation, entrepreneurship and originality of the applied trade marks. While so far they had to be represented graphically, now the graphic concept is eliminated, thus leaving free way to other types of non-traditional trademarks such as holograms, audiovisual, digital, etc.
- Evidence of use of the trade mark in the opposition procedure
As we informed some time ago, there is now the possibility of requiring the opposing party proof of the use of the trade mark basis of his opposition. You can read in depth about this in the following article: Important changes in the Spanish Trade Mark Act, which will affect to all registrations granted on or before January 2014
- Absolute grounds of refusal for DOs and GIs.
The absolute grounds of refusal of registrations are systematized and reordered, in particular, those referring to the protection of Designations of Origin (DO) and Geographical Indications (GI). Therefore, in accordance with the requirements of the Directive, the incompatibility with the DOs or the GIs is an express cause of prohibition, thus being an absolute ground of refusal.
The scope of this right also includes traditional terms of wines and traditional specialities guaranteed, as well as plant varieties.
- Unification of the well-known trade mark
The distinction between notorious trade mark and well-known trade mark is suppressed. The concept of notorious trade mark disappears, and well-known trade mark remains as a single category of reinforced protection. This differentiation of concepts was practically included only in the Spanish system, so the scope will need to be determined in each case in relation to similar brands of third parties based on the degree of resemblance and field of application.
- New competences for the OEPM in the detriment of the Courts
The OEPM is granted competence to declare by direct means the invalidity or revocation of registered trade marks, either because they collide with an earlier trade mark or because they have not been used in the last five years. This was a change much demanded by the users of the trade mark system and by the companies, and will streamline the procedures and lower costs, producing a harmonization with the European trade mark system. This amendment will enter into force on 14 January 2023 due to the need to adapt resources and train the staff of the OEPM before taking on this new responsibility.
- New procedural fee
A new fee is created for the filing of a request for invalidity or revocation before the OEPM.
- Trade mark infringement
Despite the fact that it was already included in the previous regulations, now it is being recognized, with another formulation, that the holder of a registered trade mark can act not only against direct acts of infringement of its trade mark, but also against preparatory acts. Likewise, it will now be possible to prevent the introduction of goods from third countries, without being released for free circulation, because they are contrary to an already registered trade mark.
ISERN Patentes y Marcas will inform its clients of any new developments that may occur in connection with the entry into force of the new Spanish Trade Mark Act. If you have any questions or need advice, we remain at your disposal through all our communication channels.