On 27 December 2018 the Spanish Official State Gazette has published the Royal Decree Law 23/2018, of December 21, on the transposition of directives on trade marks, rail transport and package travel and related travel services
This Royal Decree Law transposes Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks. The objective of the transposition is to harmonize the national trademark system with the European system of the EUIPO (European Intellectual Property Office).
The Spanish Trademark Act
The amendments will enter into force on 14 January 2019 (with two exceptions which we will address below) being the following the most relevant ones:
Any nationality
Any natural or legal person may be the proprietor of a Spanish distinctive sign, irrespective of nationality, residence or international treaties.
Representation
The former requisite of “graphic representation” is substituted by “representation” in order to adapt to technological developments. A sign may be represented in any appropriate form using generally available technology (sound, video, hologram, etc.) as long as the protection granted to the proprietor can be clearly determined.
“Trademark with reputation”
The concept of “notorious trade mark” will no longer exist in the amended version of the law. Only the concept of “trademark with reputation” will remain. A “trade mark with reputation” is defined as a trade mark known by a significant part of the public interested in the goods and services. The Spanish trade mark with reputation shall have a reputation in Spain and the European Union trade mark with reputation shall have reputation in the European Union.
Absolute grounds for refusal
The list of absolute grounds for refusal is widened by rendering protection to designations of origin and geographical indications, traditional specialties guaranteed and plant varieties. With regard to relative grounds for refusal, it will be possible to base an opposition against a Spanish applied for distinctive sign on prior designations of origin and geographical indications.
Opposition proceeding
The opposition proceeding is modified so that if the applicant so requests, the opponent shall furnish proof of use of the earlier trade mark as long as it has been registered at least for 5 years. This amendment will not enter into force on 14 January 2019, but once the implementing regulation enters into force.
Cancellation and invalidity proceedings
Cancellation and invalidity proceedings will be administrative proceedings before the Spanish Patent and Trademark Office. This amendment will enter into force on 14 January 2023.
Counterfeits
The proprietor of a registered trademark will be entitled to prevent third parties from bringing goods in the course of trade into Spain without being released for free circulation here, where such goods come from third countries and bear without authorisation a trademark which is identical or essentially identical with the Spanish registered distinctive sign.
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