Following on from our recent article regarding industrial property law, allow us to now comment upon the new developments in the Regulation for the enforcement of Act 17/2001 (Trademark Act), which entered into force on 1st May (Royal Decree 306/2019) for modifying the framework established in the existing regulations (Royal Decree 687/2002) and which constitutes the essential mechanism so that the latest modifications carried out by the Trademark Act (see Royal Decree Law 23/2018 as commented in our previous article) may be carried out effectively.
Following the order of the modifications made, we may emphasise the most significant new aspects as follows:
In relation to the definition of the rights conferred by the mark, and with a direct link to Article 16.1 of the TRIPS Agreement, those applicants who have already been effectively using the sign which is the subject of the application may claim the distinctiveness acquired by the sign through use (Article 1.3).
As we already mentioned in our previous article, the requirement for graphic representation is eliminated, so that any representation that is adequate according to the available technology will be accepted (art. 2) which sets a precedent for the registration of three-dimensional, position, pattern, colour, sound, movement and hologram trademarks. This is possible due to the fact that, pursuant to this regulation digital files are accepted for the formalisation of distinctive signs.
Although they are not explicitly excluded, it does not seem likely that applications for “scent marks” contemplated under other legal systems, such as the United States, shall be accepted.
Since the last amendment of the Trademark Act, any natural person or legal entity may apply for a trademark or name regardless of nationality, place of residence or establishment. In relation to this development, the new configuration of the Regulation empowers Spanish Trademark Office examiners to carry out an examination of legitimacy regarding the subjects or entities applying for registration. This examination may be initiated ex officio and the applicant shall have one month to submit any claims (Art. 10).
The amendment of Art. 21 bis, introduces the possibility to require the opponent to prove the effective use of their trademarks. Thus, all oppositions based on trademarks which are not being put to genuine use shall be rejected. However, if it is not possible to demonstrate the effective use of the trademark, the Spanish Trademark Office shall not immediately dismiss the opposition given that the Regulation now grants the opponent the possibility of providing a justifying reason for the lack of use of the trademark.
This has a direct impact on the legal and commercial strategy of all those companies which register numerous signs as “coverage marks”, i.e. marks which are not intended for use, but which allow the blocking of applications for similar marks by competitors. It remains to be seen whether this requirement can be met in the face of any opposition or whether it only applies to trademarks that have been registered for more than 5 years.
Art. 21 itself specifies the requirements that must be met when the owner of a trademark must demonstrate use. Supporting documents must be provided along the lines suggested by the regulations, such as advertisements, photographs or catalogues.
On the other hand, the holders of registered trademarks will be able to spare themselves the application procedure for the renewal of their trademarks if they make the renewal payment by electronic means. The Spanish Trademark Office must notify the holders of the expiry of their trademarks with a period of 6 months in advance, although this legal mandate is not binding (Art. 25).
The alteration of Article 56, concerning representation, is probably of most interest to foreign companies. By virtue of its new content, any natural person or legal entity may communicate with the Spanish Trademark Office, without the need for an Industrial Property Agent, and an employee may be appointed by accreditation in accordance with the law.
For the purposes of relaying notifications to applicants and trademark holders, said article requires only one means of communication available to the Spanish Trademark Office, be it a postal address in any country of the European Economic Area, or any other feasible technical means.
With regard to the articles referring to nullity and expiration procedures, the reform of the law applies criteria similar to those introduced in the system of oppositions. Among others, it is worth highlighting the requirements regarding the formal content of the application for nullity and expiry (art. 58).
In keeping with what is stipulated in the modification of the Trademark Act, the introduction of the new system of administrative nullity and expiry proceedings has been postponed until 2023, given the need for an overall reform of the Judicial Authority Act for the dejudicialisation of these procedures.
In conclusion, the modification of the Regulation does not have a retroactive character, thus any proceedings already initiated shall be adjusted in line with previous regulations.
Ignacio de la Vega Encinas
Vilá Abogados
For more information, please contact:
24th May of 2019
