Changes in the Spanish Patent and Trademark Office’s procedure for the allocation of “filing dates” to converted EUTMs
From 2 December 2019, EUTM conversion requests filed at the Spanish Patent Trademark Office (SPTO) will have the date on which the applicant files the EUTM conversion request at the SPTO and not the date on which the SPTO receives the conversion request from the EUIPO.
This change aligns the procedure with a more accurate understanding of the applicable trademark law, which reads as follows:
“The procedure for converting an application or a Union trademark into a national trademark application shall be started upon receipt by the Spanish Patent and Trademark Office of the request for conversion transmitted to it by the Intellectual Property Office of the European Union.“
This wording clearly distinguishes between the conversion request that the EUIPO sends to the SPTO and the subsequent conversion request that the applicant must submit to the SPTO within the time limit provided for in the Implementing Regulation:
“The application for conversion of a Union trademark must be filed within a period of two months from receipt of the request for conversion by the Spanish Patent and Trademark Office….”
In accordance with this distinction, the trademark law expressly provides that:
“the filing date shall be considered to be the day on which the application for conversion was received by the Spanish Patent and Trademark Office“.
As a result, the relevant date is that of the filing of the application for conversion before the SPTO and not that of the receipt by the SPTO of the request for conversion from the EUIPO.
Nevertheless, this change will only affect the date of the renewal of the national trademark that results from the conversion. The change will not affect the “filing date” of the trademark for a trademark will continue to be considered filed on the filing date granted to it as an EUTM application for the purposes of understanding them as earlier trademarks.
National trademarks already registered or in the process of being registered resulting from the conversion of EUTMs whose conversion request was transmitted to the SPTO before 2 December 2019, will continue to maintain as their “filing date” for the purposes of their duration and successive renewals the date on which the SPTO received the conversion request from the EUIPO.