The reform of the Spanish Trademark Act 17/2001, which came into force on 14 January 2019, introduced many changes in order to be harmonised with the EU Directive. Thus, we had been waiting for the necessary implementing regulation that has just been published in the Spanish Official Gazette.
The mentioned regulation, albeit belatedly, modifies 25 articles, rewording them in order to correctly include the amendments to the Trademark Act, but it also adds:
- A new article, 21 bis, regarding the request of proof of use. As in the case of EUIPO, the Spanish trademark applicant may require proof of use of opposing trademarks registered more than five years ago. The opponent will be granted a 1-month deadline to submit these evidences, and, in the event that insufficient or no proof was filed, or if the opponent could not justify the lack of use, the opposition shall be automatically dismissed, without any additional consequences.
- A new title, regarding invalidity and cancellation actions against trademarks or registered trade names. The direct administrative competence of the SPTO is established, to deal with invalidity or cancellation actions against trademarks or registered trade names. These procedures are currently being handled by the Spanish Commercial Courts.
If we focus on the positive aspects of these changes, we should admit that there have been many important improvements, such as the description of the trademarks’ concept and types. From now, the distinctive signs shall be registrable through any means, as long as the object of protection may be clearly and precisely determined (it is now possible to file video and audio files, for instance); a basic regulation of the procedure for invalidity and cancellation actions on the grounds of non-use; the inclusion of a specific regulation for each different type of trademark; it is now required that the goods and services in new applications are clearly and precisely identified; reduction of administrative burdens concerning renewals of trademark sand trade names; etc.
It should also be noted that the legislator has included designations of origin and geographical indications as absolute and relative grounds for refusal. Thus, both the SPTO and the Council of the Denomination of Origin may either ex officio examine or oppose as a third party to the registration of an identical or confusingly similar trademark with the earlier right.
Likewise, it not possible anymore to file defensive oppositions, due to the introduction of the proof of use request in these proceedings, in cases in which the earlier marks are registered for more than five years and have not been used. Defensive oppositions were common practice for many companies, that systematically opposed to new trademark applications, on the basis of earlier rights that had not been used for decades.
However, despite these pros, the new scenario has also several cons. Concerning the proof of use, it would have been a better deterrent for opponents if a decision on legal costs had been introduced, like in the EUIPO. This possibility was considered but finally dismissed. In addition to this, the new articles do not refer at all to the partial use of the earlier trademark. In the event that use could be evidenced only for certain goods or services, would the opposition be totally dismissed, or will it continue on the basis of the goods and services for which the use has been proven?
On the other hand, it seems that decision on oppositions and refusal proceedings shall remain a very brief reasoning on the grounds for granting or rejecting the registration of the sign. There is no improvement in this aspect, since the regulation states that the grounds shall be “briefly” specified (Art. 22.1).
It is certain that the administrative burden for the renewal of trademark and trade names is reduced, since the mere payment of the renewal fee will be now considered as a renewal application itself. This new article 26.4 of the Regulation may cause legal uncertainty in renewal procedures, since any third party may now pay the renewal fees, even without consent or knowledge by its owner or authorized representative.
Mention must be made to the disappearance of the well-known trademark, which is replaced by a single “Renown Trademark” category. Even though this unification is positive and constituted the end of not very practical discussions, we face now several problems. Considering that there is now no distinction between renown and well-known trademarks, we wonder whether only the trademarks that are known by the general public shall deserve this reinforced protection. In any case, when dealing with the grounds in opposition proceedings, the approved regulation maintains the two different categories, which seems somehow contradictory (Art. 17.2.g, Art. 17.2.k, Art. 18.4).
Regarding the proof of use, the 1-month deadline that has been established for its submission constitutes a short time, being 30 days not sufficient when dealing with large amounts of documents to gather, filter and, if necessary, translate and submit.
Therefore, it would have been better to establish a 2-month deadline, following EUIPO’s practice, and, proportionally, to grant the applicant as well a 2-month deadline to analyse the provided evidences and file arguments in defence of the registration of the trademark. Additionally, the Regulation does not clarify whether the SPTO may issue a partial registration decision for a contested trademark, according to the proof of use that has been finally submitted. This also happens in connection with invalidity and non-use cancellation actions.
We may affirm that the addition of a new Title IX to the Trademarks Act, concerning the new direct administrative competence of the SPTO to deal with invalidity or non-use cancellation actions, has not been accompanied by a sufficiently exhaustive regulatory development.
In this sense, the wording of the Regulation is truly vague, pointing out that the new invalidity applications “may” include reasons, arguments and grounds supporting the application, as well as any evidence in its support (Art. 58.4). This way, applicants could to file invalidity applications as mere forms, without any reasonings and without proving a legitimate interest.
In addition to the above mentioned, the SPTO’s faculty to decide whether the documents submitted by one of the parties should be notified to the other party seems to be inadequate. Art. 61.4 establishes that, when the observations filed by one party do not include new elements, or if all the gathered elements were sufficient to issue a decision, notifying the counterpart shall be “optional”. In the event that the decided not to provide the other party with all documents, there could be a risk of breach of the right of defence.
Even though the SPTO takes on the direct competence in the invalidity and non-use cancellation actions, this new regulation is difficult to be put into practice, therefore its implementation is postponed to January 14, 2023. Until then, the Courts shall continue dealing with these actions, allowing the SPTO to adapt its human and technical resources in order to taking on these new functions with soundness and efficiency.
