The Spanish Patents and Trade Marks Office has recently made available in its website a 54 pages-long pretty-detailed memorandum that elaborates on the Office’s practice regarding the application of absolute grounds for refusal (examined by the Office ex officio). It has been published in Spanish only.
According to section 5 of the Spanish Trade Mark Act:
“The following signs may not be registered as a trademark:
(a) those which may not constitute a trademark as they do not comply with Article 4(1) of this Law;
(b) those which are not distinctive in nature;
(c) those which consist exclusively of signs or indications which may be used in trade to designate the species, quality, quantity, purpose, value, geographical origin or period of production of the good or provision of the service, or other characteristics of the good or service;
(d) those which consist exclusively of signs or indications which have been converted into those used habitually to designate the goods or services in common parlance or in fair and constant trade practices;
(e) those consisting exclusively of the form imposed by the nature of the good itself or by the form of the good necessary to obtain a technical result, or by the form which gives substantial value to the good;
(f) those which are contrary to the Law, public policy or morality;
(g) those which may mislead the public, for example as to the nature, quality or geographical origin of the good or service;
(h) those used to identify wines or spirits and which contain or consist of indications of geographical origin which identify wines or spirits that do not have such an origin, including when the true origin of the good is indicated or the geographical indication is used in translation or accompanied by expressions such as “class,” “type,” “style,” “imitation” or other similar expressions;
(i) those which reproduce or imitate the armorial bearings, flag, insignias and other emblems of Spain, its Autonomous Communities, municipalities, provinces or other local entities, unless due authorization is provided;
(j) those which have not been authorized by the competent authorities and have to be rejected under Article 6ter of the Paris Convention;
(k) those which include insignias, emblems or armorial bearings other than those envisaged in Article 6ter of the Paris Convention and which are of public interest, except where their registration is authorized by the competent authority.
(2) The provisions of paragraph (1)(b), (c) and (d) shall not apply where the trademark has acquired, for the goods or services for which registration is sought, a distinctive character as a consequence of such use as has been made of the trademark.
(3) A combination of various signs among those mentioned in (1)(b), (c) and (d) may be registered as a trademark, provided that said combination has the distinctive character required by Article 4(1) of this Law”.
This Class 46 member applauds this initiative, which seems very inspired by the popular OHIM’s Guidelines (it refers to actual cases and provides a number of examples for each specific prohibition). The SPTO’s memorandum will bring certainty on this key issue by setting clear parameters worth to consider when creating/applying for a trade mark in Spain.
Despite being non-binding for the Courts, the reflections posed by the SPTO in the said memorandum on the absolute grounds for refusal will also provide IP litigators ex abundantia arguments to sustain trade mark cancellation actions. Finding direct allusions to this memorandum in the Spanish case law is just a matter of time.