On 21 December 2018, the Spanish Government approved Royal Decree 23/2018, by which the Spanish Trade Mark Law was amended to incorporate the changes included in the EU Harmonization Directive 2015/2436.
The main amendments incorporated in the new law include:
1. Any individual or legal person, no matter its nationality, place of residence or establishment, will be entitled to apply and own a Spanish Trade Mark.
2. It will be possible to represent the sign of the mark by any means which allows the subject matter of protection to be determined in a clear and precise way.
3. Changes are introduced in the list of absolute grounds of refusal, incorporating:
i) the prohibition to register not only the shape, but also another characteristic, which results from the nature of the goods themselves, of forms which are necessary to obtain a technical result or which gives a substantial value to the goods.
ii) The prohibitions relating to designations of origin and geographical indications have been redrafted to what is foreseen in the Directive.
4. The distinction between well-known trade marks and reputed trade marks that existed in the former law has been eliminated, in order to align the Spanish law with the EU Directive. In the new law, only reputed trade marks are contemplated. However, the concept of unregistered well-known trade marks, as provided by Article 6bis of the Paris Convention, is retained.
5. In opposition proceedings, it will be possible to request the proof of use of the opponent's trade mark, if it has been registered for more than five years.
6. The five-year period for the proof of use will start once the decision granting registration is final, instead of the date of the publication of the grant in the Spanish Official Gazette, as it was the case in the former law.
7. Direct revocation or cancellation actions on grounds of lack of use shall be filed before the Spanish Patent and Trade Mark Office. Revocation or cancellation actions for lack of use due to counterclaims in infringement actions will continue to be dealt with by the Spanish Civil Courts.
All the above changes entered into force on 14 January 2019, the final deadline to implement the EU Directive, except for the changes in paragraph 7 above, that will enter into force on 14 January 2023.
Now the Royal Decree must be validated by the Spanish Parliament, which will have to decide whether the law must be prosecuted as a Draft Law.
An Implementing Regulation will have to be adopted.
Luis-Alfonso Duran
Spanish Delegate of the Executive Committee
Study & Work Comission (CET)
Member, Group 1 - Trade Marks
