APPROVAL OF THE MODIFICATION OF THE TRADEMARK REGULATION IN SPAIN

On Friday 20thJuly, the proposal of modification of the Trademark regulation in Spain was approved, modifying the current Law of Trademarks 17/2001 and harmonizing the national law with the rules of the European Union. Among the changes introduced in both formal and substantive aspects of the Law, we would like to point out the following:

 

  • The definition of Trademark no further refers to the graphic representation requirement for the signs subject to protection, being possible to represent the sign in any suitable mean for that purpose (sound, video, hologram…).
  • The protection for the Designations of Origin and Geographical Indications is reinforced.
  • The Law establishes an especial protection only for the Trademarks and Tradenames with reputation, that is, known by the general public, irrespectively of the field of application of the sign.
  • The requirements for obtaining a filing date in new applications are minimized, and also the ones for renewing an already granted Trademark.
  • Opposition procedures are ruled in detail, including the possibility of requesting a proof of use of the prior signs on which the opposition is based.
  • The Spanish Patent and Trademark Office is authorized to declare the nullity and caducity of a Trademark, sharing this competence with the Courts of Law when these procedures are set out as result of a reconvention of an action for violation of a Trademark.
  • It is established the possibility of forbidding the use of a Trademark and the introduction in the territory of goods identified by a Trademark identical to the one registered, without proving that those goods are to be marketed in the country.
  • It is ruled the capacity of the licensees for initiating actions against the violation of a Trademark; and as to collective Trademarks refers, the capacity of the people authorized to use them for initiating these very same actions.

 

These amendments shall enter into force on 14thJanuary 2019, except for the rules related to the nullity and caducity procedures, which shall enter into force on 14thJanuary 2023.