FICPI, The International Federation of Intellectual Property Attorneys

Changes in Trade Mark opposition proceedings in Spain

03rd June, 2019

As a result of the transposition of the EU Directive, there is a new procedure for trade mark opposition proceedings in Spain. This will apply to any Spanish application or International application designating Spain as from 1 May 2019.

The new procedure implements the possibility of requesting proof of use of the opposing trade marks that have been registered more than 5 years before the filing or priority date of the contested application and it establishes very short deadlines to request, submit and discuss such proof of use.

In the following paragraphs we analyse the most important tips:

  1. The new proceedings will apply to any new Spanish trade mark application or designation of Spain in an International trade mark under the Madrid Protocol filed as from May 1, 2019.
  2. The new procedure will entitle the applicant of a trade mark application opposed by a third party to request the proof of use of the opponent trade mark within the last 5 years prior to the priority date or filing date of the opposed application, provided that the grant of the opposing trade mark has been final for more than 5 years.
  3. The applicant that will receive an opposition from a third party will have a term of 1 month to request the proof of use of the opposing trade mark.
  4. The opponent will have only 1 month, upon notification of the request, to submit the proof of use and a translation of all evidence filed into Spanish.
  5. The applicant will have a term of only 1 month upon notification of the proof of use to submit arguments.

As a result of these new opposition proceedings it is advisable to:

  1. Before filing an opposition check whether the applicant would be entitled to request the proof of use. In this connection the grace period of 5 years to put a trade mark in use has changed. Until now this term was counted as from the date of publication of the grant. From now on it will be counted as from the day when the grant has become final.
  2. If proof of use of the opposing trade mark can be requested, it would be prudent to check with the owner whether the opposing trade mark has been used, how, for  which of the protected goods/services and whether the use would be sufficient to conclude that the opposition would have reasonable chances of success.
  3. Given the short time available to submit the proof of use and to translate it (only 1 month), it would be advisable to start collecting the evidence of use as soon as the opposition is filed to have  sufficient time to submit the evidence and eventual translation within the deadline.
  4. Because opposition proceedings have become more complex than before, it is important that the opposition proceedings are conducted by Spanish professionals with a good knowledge of Spanish and European trade mark law who will devote to the case the time and attention required.

Author: Luis-Alfonso Durán

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