On December 21, 2018, the Council of Ministers approved the amendment to the Trademark Law (TL) No. 17/2001 in order to adapt its content in compliance with the Directive 2015/2436 of the European Parliament and of the Council, dated December 16, 2015, to approximate the laws of the Member States relating to trade marks. Said amendment has been enacted by Royal Decree-Law (RDL) No. 23/2018 of December 21. Without prejudice to any future analysis of this news, we will carry out a brief review thereof.
The amendment is significant, both for the amended articles (48 out of the 91 articles in the Law, plus 3 new articles being added thereto) and for the matters being modified. The two most important aspects are those referring to nullity and expiration claims, those related to the entitlement to file an application, and the concept of trademark.
In respect to the nullity and expiration of the trademark, the legal amendment provides the Spanish Patent and Trademark Office (SPTO) the power to declare a trademark registration null or lapsed through an administrative procedure established in the text of the RDL, by setting standards related to the connection of causes and between bodies, as well as the effects of the declarations of nullity and expiration.
As for the entitlement to apply for a trademark registration, the restrictions to said legitimation are being removed, granting absolute freedom for any individual or legal entity, without any additional condition. As for the concept of trademark, the demand of the trademark being graphically representable and the systematic and declaratory list on which features may constitute a trademark have been removed.
The absolute prohibitions to incorporate a special protection for indications and designations of origin, and plant varieties are also modified. Likewise, the difference between well-known trademarks and reputed trademarks has disappeared, leaving only the indication of "well known trademark". It also regulates matters related to oppositions and responses to the suspension of the procedure by official action or by opposition, thus establishing the possibility that the application holder demands proof of genuine use of the opposing trademark, if appropriate. The renewal of a registration may be limited, in case of a total renewal, to the payment of a certain fee.
The rights conferred by the trademark registration are also modified, including limitations on such rights. Procedural aspects in actions for trademark infringement, compensation budgets for damages, and how to calculate such compensation are also regulated.
In respect to the trademark as an object of property, the rights of licensees in infringement proceedings have been regulated. Likewise, certain specialties related to collective trademarks and guarantees as regards their defense, procurement and transmission are included. The trademarks of the Union, previously known as community trademarks, and their relationship with national trademarks and their compliance with Spanish legislation are comprehensively included in the RDL.
Finally, the first additional provision that establishes the competent jurisdiction and the procedural rules has been reformed to grant the SPTO the direct competence to declare the nullity and expiration, and to establish the remaining jurisdictional competences that correspond to Commercial Courts.
In summary, the transformation undergone by the trademark system in Spain is very important, and in our opinion it would have deserved a appropriate procedure as a Law and not as a Royal Decree-Law, much less when in the same RDL they combine such unconnected matters as trademarks and rail transport.
The legal provisions will come into force on January 14, 2019 except for the demand of proof of genuine use in the corresponding oppositions, which will come into force when the corresponding regulations are issued, and the new jurisdictional framework that will enter into force on January 14, 2023.