In the latest guest post on the implementation of the EU Trade Mark Directive, Cristina Bercial-Chaumier discusses the Royal Decree-Law 23/2018 in Spain:

The Royal Decree 23/2018 of 21 December 2018 implementing the Trade Mark Directive 2015/2436 was published at the Official State Gazette on 27 December 2018 and entered into force for its main part on 14 January 2019.

The aim of the reform is to facilitate the registration of trade marks, reinforce their protection and to fight against counterfeiting. The role of the Spanish Trademark and Patent Office will be crucial after the reform.

The main change introduced will be the direct competence of the Spanish Trademark Office for invalidity and revocation proceedings. Nevertheless, the deadline for the implementation of this modification is not until 14 January 14 2023.

This change will accelerate and significantly reduce the costs for such proceedings.

It should be noted that from this date, it will be only possible to file invalidity and revocation actions before the courts as a counterclaim in infringement proceedings.

With respect to the most significant modifications that have already entered into force, we refer in particular to the following:

Elimination of the graphical representation requirement: this amendment will open the possibility to register so-called non-traditional marks such as sound, multi-media, motion marks and holograms.

Persons who can be proprietors of Spanish trade marks: any legal or natural person independently of his/her nationality, country of residence or establishment.

Clarification of the absolute grounds: inclusion of specific provisions for designations of origin (PDO), geographic indications (PGI), traditional terms for wine, traditional specialties guaranteed and vegetal varieties. Furthermore,  the prohibition of Article 5 (e) is drafted to include not only the shape but also other characteristics which will be imposed by the nature of the product, which will be necessary to obtain a technical result and which will confer a substantial value to the product.

Relative grounds: specification of PDOs and PGIs as relative grounds of refusal.

Reputation: The concept of well-known trade marks is eliminated from Article 8, while the concept of reputation is maintained benefiting from a higher protection. It will be irrelevant whether the goods and/or services involved are similar or dissimilar. An identity or similarity between the signs will be enough provided that an unfair advantage is sought or that the use of the latter sign is detrimental to the reputation or the distinctive character of the prior trade mark.

Rights conferred by the registration: the registration of a trade mark does not confer on its owner immunity from infringement actions. Contrary to the past, it will no longer be necessary to cancel the later infringing trade mark prior to initiating an infringement action. The specific cases on which the trade mark owner may prohibit the use of the later mark are specified in Article 34 including the right to use the sign in violation of Directive 2006/114CE on Comparative Advertising.

Goods in transit: The trade mark owner may seek an injunction against goods brought into Spain from third countries even when they are not released for free circulation in Spain. Nevertheless, this will not apply where the owner of the goods of the declarant proves that the registered trade mark owner is not entitled to stop the marketing of the goods in the country of destination.

Intervening right as defence in trademark infringing proceedings: The so-called intervening right of Article 16 of the Trade Mark Directive has been introduced in the Spanish Law as a mean of defence for the proprietor of a later registered trade mark in infringement proceedings in Article 44 bis. The trade mark proprietor shall not be entitled to prohibit the use of a later registered trade mark where the junior trade mark could not be declared invalid as a result of:

• limitation in consequence of acquiescence;
• the earlier mark was not distinctive or did not have a reputation; or
• the earlier trade mark would have been subject to a non-use revocation action.

This defence will require reverting to a point in time prior to the filing of the infringement action and will make it necessary for the parties to assess whether it is possible for the defendant to rely upon one of these defences and whether there is evidence in support thereof.

Licensee rights: the licensee may only bring an action for trade mark infringement with the proprietor’s consent. Nevertheless, the exclusive licensee will be entitled to bring an action if the trade mark proprietor has failed to do so after having been asked by the licensee. Furthermore, the licensee may intervene in proceedings initiated by the trade mark proprietor to obtain compensation from the infringer.

Use of the mark: Article 39 introduces the possibility of requesting evidence of use in opposition proceedings provided that the prior mark has been registered for more than five years. Furthermore, the possibility of requesting evidence of genuine use will also be foreseen in invalidity and revocation proceedings before the Office. In this respect, the obligation of providing evidence of use in opposition proceedings will only enter into force when the Implementing Regulation will be published and enter into force.

The proceedings before the Spanish Patent and Trademarks Office will, after the amendments introduced by the Royal Decree, be harmonized and in line with the EUIPO proceedings.

By Cristina Bercial-Chaumier, Casalonga, Alicante, Spain