Sep 22, 2022 (Newsletter Issue 13/22)New Cancellation Proceedings SoonAs of 14 January 2023, the procedure for trademark cancellation actions such as revocation and invalidity proceedings will change. The Spanish Trademark Office (SPTMO) will administer all cancellation actions instead of the intellectual property courts. This was prompted by Directive 2015/2436 on the Spanish Trademark Law.
For more information, please click here Source: www.brandwrites.law Feb 10, 2022 (Newsletter Issue 2/22)
Modification of 3 Main IP Laws Proposed
In October 2021, the Council of Ministers of the Spanish Government authorised the text of the preliminary draft law prepared by the Spanish Patent and Trademark Office (SPTO) amending the following main intellectual property laws:
1. Trade Mark Act 17/2001 of December 7, 2001;
2. Legal Protection of Industrial Design Act 20/2003 of July 7, 2003; and
3. Patents Act 24/2015 of July 24, 2015.
Some of the proposed amendments to the Trademark Law are the following:
- New exceptions have been introduced to the revocation of a trademark on the grounds of a lack of renewal where there are registered seizures, a claim action or bankruptcy proceedings underway.
- In invalidity and revocation proceedings in which the owner of the invalid or revoked trademark has acted in bad faith, the action for compensation for damages must be filed before the civil court.
- The articles referring to grounds of refusal for collective and certification trademarks will be applicable to international trademarks as well.
- In the transformation of EU trademarks, the requirements for signs will be brought into line with those established for applications of national trademarks or trade names.
- The requirement for graphic representation has been eliminated for trade names.
- The new procedure, brought about by reform in 2018, is being introduced, in addition to a legal power of the Minister of Industry, Trade and Tourism to modify the maximum terms of resolution related to distinctive sign procedures, upon proposal by the SPTO.
- Following procedural changes introduced in the 2018 reform, the amount of the opposition fee is updated to reflect the service now provided.
It is expected that the law amending the three main IP laws will be approved before the end of 2022.
Source: www.ga-ip.com; www.brandwrites.law
Jun 17, 2021 (Newsletter Issue 12/21)
Statements of Grant of Protection for Hague Designs Designating Spain
As of April 5, 2021, the Spanish Patent and Trademark Office (OEPM) automatically issues statements of grant of protection concerning all, or some of the designs included in Hague System international registrations in which Spain is designated. This is in accordance with Rule 18bis(1) of the Common Regulations.
The OEPM issues these statements at the end of the applicable refusal period if no opposition has been filed.
Source: www.wipo.int
May 06, 2021 (Newsletter Issue 9/21)
Back-office System for Designs Enhanced
On April 5, 2021, the Spanish Patent and Trademark Office (SPTO) completed a new set of improvements to its back-office system for designs. These were implemented with the support of the EUIPO’s European cooperation projects.
Several examination processes were automated in order reduce potential delays and prevent errors in manual data entry. Two of the improvements especially stand out: The electronic signature is now used in the Design Certificate. This will increase cybersecurity and avoid possible fraudulent notifications and phishing attempts. The second significant improvement is a function that automates notifications to WIPO in the case of oppositions.
Source: www.euipo.europa.eu
Mar 25, 2021 (Newsletter Issue 6/21)IP Office Provides Madrid e-FilingStarting March 15, 2021, the Spanish Patent and Trademark Office (OEPM) has given access to the Madrid e-Filing service to trademark applicants via its website. Brand owners will have the possibility to file international applications online.
An integrated key feature includes in-app access to the Madrid Goods & Services Manager that allows users to check the classification of terms in their list of goods and services.
More information on the notice, please click hereSource: www.wipo.int Nov 05, 2020 (Newsletter Issue 18/20)
Back Office System Enhanced
On October 15, 2020, the Spanish Patent and Trademark Office (SPTO), with support from the EUIPO’s European cooperation projects, completed its technical stack upgrade of the designs front office system. This followed a set of improvements to the back office system on 10 October.
The technical stack upgrade was designed to increase the security, performance and efficiency of the front office system used at the SPTO. As from now, general system maintenance will be simpler, and users will experience reduced response times and improved data validation.
The back office improvements, meanwhile, will automate some parts of the examination process, which will reduce potential delays and avoid manual data entry errors.
This release also included the proof of use functionality, which was required in order to comply with the new trademark regulations related to opposition to designs that are based in a trademark.
Source: www.euipo.europa.eu
Apr 25, 2019 (Newsletter Issue 6/19)Trade Secrets Act ImplementedThe implementation of the Trade Secrets Directive has been completed by the publication on February 21, 2019, of the Spanish Trade Secrets Act, which has entered into force mid-March.
The Trade Secrets Act does not completely re-work the existing fragmented civil law regime, but it does modify certain aspects. Key aspects are:
- New definition of "trade secrets" introduced
- The Act distinguishes between lawful and unlawful acts and includes provisions on "infringing goods".
- Rules on transfers, co-ownership and licences introduced
- It contains provisions on remedies (including more detailed provisions on damages) and preliminary injunctions.
- The Act completes and develops rules on confidentiality measures in the framework of court proceedings
- It governs certain procedural issues such as active locus standi and the limitation period
For more information, please click hereSource: www.cliffordchance.com Apr 04, 2019IP Office Will Not Accept Merger Request of Intl. RegistrationSpain has notified WIPO in accordance with new Rule 27ter(2)(b) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement (the Common Regulations), which entered into force on February 1, 2019.
In the said notification, the IP Office has declared that its law does not provide for the merger of registrations of a mark and that, as a result, its Office will not present to the International Bureau of WIPO requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please click hereSource: www.wipo.int Jan 15, 2019
Trademark Law Amended
The Royal Decree 23/2018 of December 21, 2018, implementing the Trademarks Directive 2015/2436 was published at the Official State Gazette on December 27, 2018, and entered into force for its main part on January 14, 2019.
Some of the most important changes are the following:
- No graphical representation requirement any longer
- Right to apply for registration: Any natural or legal person, regardless of nationality or place of residence or establishment, may apply for a trademark or trade name.
- New wording of absolute grounds prohibitions in Article 5
- Renowned or reputed trademarks: Concept of well-known/notorious trademarks is eliminated, while the concept of reputation is maintained introduced.
- Licensee rights: The licensee may only bring an action for trademark infringement with the proprietor’s consent, while the exclusive licensee will be entitled to bring an action if the trademark proprietor has failed to do so after having been asked by the licensee. Also, the licensee may intervene in proceedings initiated by the trademark proprietor to obtain compensation from the infringer.
- Rights conferred by the registration: Registration of a trademark does not confer on its owner immunity from infringement actions.
- Goods in transit
Cancellation and invalidity proceedings will be administrative proceedings before the Spanish Patent and Trademark Office. This amendment will enter into force on 14 January 2023.
Please note that the Spanish survey has been updated accordingly by our contributor Zivko Mijatovic & Partners, Spain.
Source: www.abg-ip.com; www.hoffmanneitle.com
Jan 30, 2018 (Newsletter Issue 2/18)
Withdrawal of Declaration of Hague Agreement
On December 26, 2017, the Spanish Patent and Trademark Office (OEPM) withdrew from the declaration for the application of level three of the standard designation fee made on January 1, 2008, under Rule 12(1)(c)(i) of the Common Regulations under the 1999 Act and the 1960 Act of the Hague Agreement (refer to Information Notice No. 4/2008).
The said withdrawal shall take effect one month after the receipt, namely on January 26, 2018. As a consequence, level one of the standard designation fee shall apply where Spain is designated in an international application filed on and after the said date.
January 24, 2018.
Source: www.wipo.int
Jul 11, 2017 (Newsletter Issue 13/17)Draft Bill Partially Amending Trademark Act PublishedThe Spanish Patent and Trademark Office (SPTMO) has published a Draft Bill (in Spanish only) that partially amends the Spanish Trademark Act 17/2001 of 7 December in order to incorporating Directive 2015/2436 of the European Parliament and of the Council of December 16, 2015.
The most important modifications proposed are the following:
-Remove the difference between a notorious and a well-known trademark
-In opposition proceedings, the applicant shall be entitled to require proof of use of the earlier trademark on which the opposition is based.
-Remove the graphical representation requirement from the definition of a trade mark.
-The SPTMO shall be competent to directly rule on the invalidity or revocation of national trademarks.
All the modifications, with the exception of the introduction of the administrative cancellation proceedings before the SPTMO, will enter into force on January 14, 2019 upon the adoption of the Draft Bill.
Source: ABG Patentes, Spain Jul 11, 2017 (Newsletter Issue 13/17)Effect Date of Protection of IR of Industrial Designs ChangedOn May 30, 2017, WIPO received from the Spanish Patent and Trademark Office (OEPM) an official letter indicating that Patent Law No. 24/2015, of July 24, 2015, which came into force on April 1, 2017, introduced modifications to paragraphs 4 and 5 of Article 76 of the Law 20/2003 of July 7, 2003, on the Legal Protection of Industrial Designs.
As a consequence of those modifications, the protection conferred by the international registration of a design shall take effect in Spain from the date of its publication by the International Bureau, provided that said registration is not the subject of a refusal of protection.
The previous communication from OEPM concerning the declaration under Rule 18(1)(c) of the Common Regulations under the 1999 Act and the 1960 Act of the Hague Agreement is withdrawn (please refer to Information Notice No. 12/2011).
The said withdrawal took effect on May 30, 2017.
For further information, please click here
Source: www.wipo.int Mar 29, 2017 (Newsletter Issue 6/17)
New Patent Law in Force Soon
The new Patent Law 24/2015 will come into force on April 1, 2017, for all Spanish patent and utility model applications filed as of this date. Patents and utility models applied for on previous dates will not be affected by the provisions of the new law.
Among the most remarkable changes, a mandatory substantive examination of patentability is introduced and a 50% discount will be applied on most fees in the case of SMEs and entrepreneurs.
Source: Ponti, SLP, Spain
Nov 25, 2014 (Newsletter Issue 18/14)F-Filing for Designs Now ImplementedThe Spanish Patent and Trade Mark Office (OEPM) has implemented e-filing for designs, developed under the framework of OHIM's Cooperation Fund.
E-filing for designs offers a simple and intuitive online registration process, making the design application process easier and quicker for users.
The new OEPM e-filing system is available at here
Source: www.tmdn.org Jan 18, 2013 (Newsletter Issue 1/13)Official Fees IncreasedThe Spanish Patent and Trademark Office (SPTO) has announced that the official fees for filing a trademark has been increased for 2013.
The official fee for a trade mark application if filed in paper is now EUR 141.73 for a single class and EUR 91.81 for each additional class; if e-filing is used the official fees are EUR 120.47 for a single class and EUR 78.04 for each additional class.
Source: Zivko Mijatovic & Partners, Spain Jan 23, 2012 (Newsletter Issue 1/12)
Opt Out of Community Search System
The Oficina Española de Marcas y Patentes (OEPM) has opted out of the community search system effective as of January 1, 2012.
CTM applications with national search requests and a reception date in 2012 with will not be sent to the Spanish Office and the applicable fee will belowered to €120 from January 1, 2012 onwards.
Source: www.oami.europa.eu
Jan 01, 2011 (Newsletter Issue 1/11)Official Fees ReducedThe Spanish Patents and Trademarks Office (OEPM) has reduced the official fees for 2011.
The official fee for a trademark application is EUR 138,94 for a single class and EUR 90,00 for each additional class.
Please check the official fees here Sep 04, 2010 (Newsletter Issue 14/10)Publication of Suspended Trademarks and TradenamesThe notification for trademarks and tradenames suspended by the Spanish Patent and Trademark Office due to formal or absolute grounds, will be published in the Spanish Official Bulletin of Industrial Property, effective by July 19th, 2010.
For more information please click here Mar 15, 2010 (Newsletter Issue 8/10)E-Filing of Trademark ApplicationsStarting from 2010 the Spanish Patent and Trademark Office (SPTO) is giving online access for citizen to public services. The SPTO has made available online procedures for e-filing of applications, renewals, appeals, assignment and licence recordations, issuance of certifications or amendments in the entered owner's name or direction.
For more information please click here Aug 17, 2009 (Newsletter Issue 2/09)
Official Industrial Property Gazette Published Electronically Daily
In Spain, there was a change at the end of July 09: at the present time the Official Industrial Property Gazette is published electronically daily now. Before, it was published on the 1st and 16th of each month.
The legal basis is the Trademark Act 17/2001, of 7 December (amended by Royal Decree-Law 23/2018 approved by the Council of Ministers on 21 December and published on 27 December) to implement the EU Directive 2015/2436 and by 2nd Final Disposition of Organic Law 7/2022, of 27th July). Spanish trademarks are protected in the continental territory as well as on the Balearic Islands, the Canary Islands, and the territories of Ceuta and Melilla in Northern Africa (the territory of Spain).
Spain is a member of the Madrid Agreement, the Madrid Protocol, the Singapore Treaty on the Law of Trademarks, and the European Union.
Trademark protection is obtained by registration.
Nice classification, 11th edition (as per 1 January 2024, 12th edition will enter into force)
Registrable as a trademark are signs, such as words, including drawings, letters, figures, colors, the shape of a product or its packaging, or sounds, provided they are appropriate for:
a) distinguishing the products or services of a company from those of other companies and
b) being represented in the Register of Marks in a manner that allows the competent authorities and the general public to determine clearly and precisely the object of the protection granted to its owner. With due authorization, the civil name or image identifying a person other than the applicant for the trademark are registrable.
The following distinctive signs are registrable: trademarks, trade names, collective marks, and certification marks.
The application is filed at the Spanish Patent and Trademark Office (SPTO). E-filing is available.
Multiple-class applications are possible, upon payment of fees.
Foreign applicants, any owner/applicant without an address in the European Union (EU) or European Economic Area (EEA) will have to appoint an industrial property agent to act before the SPTO.
A non-legalized power of attorney is sufficient, but the original power is compulsory upon requirement by the SPTO.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination and an examination on absolute grounds for refusal, but no search for prior trademarks. Protected geographical indication (PGI), protected designation of origin (PDO) were already an absolute bar for refusal of trademark protection, however, with the implementation of the EU Directive 2015/2436, traditional specialties guaranteed for wine and food, as well as signs that consist or reproduce in their essential elements a previous plant variety’s denomination have also become potential absolute bars for refusal of trademark protection.
Relative grounds for refusal are only examined if the opposition is filed by third parties with prior rights. For information purposes only, the SPTO carries out, before the publication of the application, a prior rights examination and sends a communication to those prior owners.
The processing time from first filing to registration or first office action is approx. 6 to 12 months.
An accelerated procedure is possible upon payment of a fee. After formal examination, the trademark application is published in the Official Gazette called “Boletin Oficial de la Propiedad Industrial” (BOPI), issued daily; this publication opens a two-month opposition period. Subsequently to the publication, an examination on classification and absolute grounds are made. The results of the examination along with the oppositions, if any, are reported to the applicant by way of an office action. The applicant has a one-month term to reply or to request proof of use of the earlier rights the opposition is based on if they have been registered for more than five years. Notices of registration and rejection are published as well as other modifications of rights.
The resolution which grants registration of the trademark can be appealed before the SPTO Appeals Unit. After contradictory proceedings before said Unit, a decision is rendered.
Since 14th January 2023 and by virtue of the Organic Law 7/2022, of 27 July, amending Organic Law 6/1985, of 1 July, on the Judiciary, in relation to the Commercial Courts, all decisions issued by the SPTO Appeals Unit (on patents, utility models, trademarks, designs, etc. and also including the decisions on the invalidity and revocation of trademarks) must be appealed before the Commercial Courts, particularly before seven Provincial Courts, namely those of Madrid, Barcelona, La Coruña, Bilbao, Valencia, Granada and Las Palmas de Gran Canaria.
This is a major change as said Courts are Civil, whereas until now, said decisions were appealed before Contentious-administrative jurisdiction.
The purpose of this change is to continue with the process of specialization opened by Organic Law 8/2003, of 9 July, so that these appeals against SPTO resolutions are resolved by courts with a “high degree of experience in industrial property matters” and with the aim of favoring the principle of legal certainty, it being advisable to “avoid different jurisprudential criteria in this area as two jurisdictional orders are competent, the contentious-administrative and the civil”, to quote the preamble of this recent Law.
National:The opposition period is 2 months from the publication date of the trademark application in the Official Gazette "BOPI".
Details regarding the
Opposition Period against designation of IR Mark are available in our publication on this topic
here
Protection begins with the final registration, but dates back to the date of application, although provisional protection is provided by Law since the date the trademark application was published. Trademark registration is valid for 10 years from the date of application. The registration is renewable for periods of 10 years.
Practical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereThe official fee for a trademark application if filed on paper is EUR 150.45 for a single class and EUR 97.48 for each additional class; if e-filing is used the official fee is EUR 127.88 for a single class and EUR 82.84 for each additional class. There are no official fees for publication or registration.
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Practical details on trademark licensing are available in our publication
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General Trademark Regulations
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Dec 15, 2023
Curell Sunol, Barcelona, Spain