Cancellation actions in Spain: The dawn of a new era

Cancellation actions such as trade mark revocation and invalidity proceedings are now to be prosecuted before the Spanish Patent and Trade mark Office.

Goodbye Courts

From January 14, 2023, the Spanish Trade mark Office (SPTMO) will manage cancellation actions including trade mark revocation and invalidity procedures. This has been prompted by Directive 2015/2436 to the Spanish Trade Mark Act. Since the transposition of the Directive in 2019, which brought about many (needed) changes, we were awaiting the enforcement of one of the key amendments to the Trade Mark Act, due to its on trade mark rights holders.

Many Spanish IP practitioner have protested the feasibility of the SPTMO managing all the evidence usually required in these procedures and the inexperience of this Office with such tasks. However, there are obvious benefits, which Spanish litigators know all so well.

What are the benefits?

The Spanish Courts, including the ones that specifically deal with trade mark matters, are infamously swamped. Usually revocation/invalidity proceeding takes an average of three years to be completed at the first instance, provided that no procedural exceptions occur. Revocation and Invalidity applicants spend quite the amount of time struggling over the course of a long and expensive procedure, awaiting a decision to be rendered by a Judge managing general mercantile matters. Even though the quality of the Spanish judges has been always praised, the sheer volume of different matters normally makes it difficult for such judge to become an expert in such specific legal area.

Only for cases of revocation or invalidity prompted on the midst of an infringement procedure, the Court responsible for hearing such infringement will be competent to hear about the associated counter claim of revocation or invalidity, an exception that seems only logical in terms of procedural economy and coherence.

As an argument of defence against the voices that cast a shadow on the ability of the SPTMO, we must say that this Office has been doing its homework. The public hiring of new SPTMO examiners has been taking place since the amendments to the Trademark Act occurred, providing for new and specialized staff to take care of these actions. Likewise, the Office has undertaken the task to issue many guidelines on the rules and practice of other Trademark amendments, like the proof of use request on opposition procedures, a new procedure that has been running smoothly upon its inception in 2019.

Why would it be different with Revocation and Invalidity procedures?

The SPTMO is unmistakably the most specialized and skilled public organism in Spain to pull up this challenge.

While there are many practical details that still need to be ironed out, the sun has started to shine on a new era for IP in Spain.