Modifications to the Trademark Law in Spain

On January 14, 2019 came into force a New Trademark Law in Spain, thus adapting our legislation to Directive 2015/2436 of the European Union.

 The most important modifications are the following:

 Any natural or legal person is entitled to request the registration of a trademark.

 The requirement that the distinctive sign, whose protection you wish to obtain, must be subject to a graphic representation is not require anymore. Thus, the trademark may be represented by any means, provided that the object of the protection is clearly determined. It will therefore be possible to register olfactory or taste trademarks, among others.

 The distinction between Well-known Trademarks (known in its activity sector) and Renowned Trademarks (those known by the general public) disappears because, according to the new law, the Renowned Trademarks will enjoy protection, being granted the level of protection according to the reputation obtained. The concept of Renowned is maintained in the prohibitions of registration.

 A new absolute prohibition is included: the impossibility of registering as a trademark the signs which are incompatible with registered denominations of plant varieties, designation of origin or protected geographical indications.

 Another important novelty is that in opposition proceedings, the opponent may be requested to prove the use of the opposition's base trademarks, if they have been granted more than five years ago. We still do not know what kind of proofs are going to be admitted by the Spanish Trademark Office, although we understand they will be similar to those admitted by EUIPO.

 In trademark infringement proceedings, actions against the owner of the subsequent trademark may not be initiated if it has become unassailable because the owner of the earlier trademark has tolerated its use. Or because on the date of application, the previous trademark did not have the necessary requirements to obtain the nullity of the subsequent one.

 The legitimacy of the licensees is modified, whom cannot take actions for trademark violation without the consent of the owner, unless would be an agreement. Despite of this, the exclusive licensee can initiate them if, being requested these to the owner of the trademark, he did not initiates them.

 Finally, we must make reference to the important modifications that affect the nullity and cancellation proceedings, which will cease to be court procedures to become administrative and will be prosecute before the Spanish Patent and Trademark Office (SPTO). This important modification will not come into force until 2023, because the SPTO needs an internal adaptation to be able to assume these new competences.

 We are at your disposal to clarify any questions or extend the information regarding this important legislative reform at thesilverclover@iberianip.com