In Spain trademarks are understood to be “any mark capable of being represented graphically, which serves to distinguish on the market the goods or services of one company from those of other companies”. With the aim of moving more in line with European Directive 2015/2436 and in the absence of the approval of the respective regulations which develop these new aspects, as from 14th January 2019, Spain now has in place a new regulation which modernises the procedure for registering trademarks, equating it with the standards within Europe. The most important new aspects are listed below:
Firstly, as from this date, it shall be sufficient to present the distinctive sign in a way which allows the authorities and the public to determine the object of protection. The requirement for the need for a graphic representation to be registered has been eliminated, and this allows leeway for the registration of new marks in the form of hologrammes or olfactory marks.
On the other hand, the concept of the notorious mark is eliminated (art. 8.2) leaving the renowned trademark (art. 8.3) as the only figure that extends its protection to any type of product or service that is known by the general public.
The most interesting new aspect for foreign entities is that as from this date and regardless of circumstances related to the nationality, residence or international conventions, both individuals or entities may obtain the registration of their trademarks.
Furthermore, steps forward have been made to counteract piracy. In this way, at the time of holding up the introduction into the country of those goods which have an identical trademark to another already registered trademark, it is not necessary to demonstrate that said goods are going to be marketed.
On the other hand, the harmonisation of the regulation in line with the European framework, shall allow, among other effects, that the European procedures and applications system shall start to take into consideration the declarations of reputation on a national level.
In respect of marketing strategies and legal foresight, it is very important to take into account that it shall no longer make sense to carry out trademark registrations purely for defensive purposes, given that, in opposition proceedings, the applicant may require the opposition to provide evidence of use of the trademarks object of the dispute.
Furthermore, it is anticipated that the Spanish Patent and Trademark Office (Oficina Española de Patentes y Marcas – OEPM) may process nullity or expiry actions on a trademark. This new aspect shall allow the speeding up of procedures, reduce costs and alleviate the congestion of the courts which usually deal with this type of procedures. There have also been developments in relation with the protection of designation of origin and the designation of plant origin, the protection thereof has become covered by the scope of full bans (art. 5) excluding the possibility of registering any distinctive trademarks, which may give rise to confusion regarding previously recognised designation of origin or geographical indications (art 9.3).
Finally, we must await the full entry into force of the reformation, given that sections 3 to 6 of article 21 referring to the requirement for the accreditation of the use of the trademark, as well as the possibility to file nullity and expiry applications with the OEPM, shall not take effect until the regulation has been passed.
At Vilá Abogados, we are at your disposal to carry out the necessary analysis for the management and regular monitoring of your trademarks.
Ignacio de la Vega
Vilá Abogados
For more information, please contact:
29th March 2019
