The Spanish Government amends the Implementing Regulation of the New Trademark Law

The Implementing Regulation of the Trademark Law entered into force on 1 May 2019, having been approved by the Council of Ministers by Royal Decree on 26 April.

Spanish Trademark Law was amended towards the end of last year in order to bring it into line with the European Directive 2015/2436 to approximate the laws of the Member States relating to trademarks, which harmonises the national trademark systems of the European Union to facilitate their registration and management.

The amendments of the Implementing Regulation of the Trademark Law relate to important procedural aspects, including the definition of new types of trademarks that have arisen due to the removal of the requirement to graphically represent the sign, which was removed during the reform of EU trademark law.

As such, for the purposes of adapting to new technologies, trademarks can now be represented by any media (for example, audio and video files) as long as the object of the protection granted to the owner can be clearly and precisely determined. This change expressly enables the registration of movement, multimedia, hologram, sound trademarks and more.

In addition to a number of changes regarding the content of notices of opposition and the filing of evidence and documents enclosed with said notice, a new article is included which enables a trademark owner to request evidence of “genuine” use of the trademark being relied on by the opponent. If the trademark has not been used, it is now possible  to assert justified reasons for the lack of use. The way in which this evidence of use, its content and scope can be requested is also regulated, as well as the time at which it can be requested and the period of time the opponent has to file claims and comments once it is received. This measure entered into force in Spain on 1 May 2019.

The new Trademark Law introduces a new section in which the administrative revocation or invalidity procedure is regulated, as a result of the direct jurisdiction given to the Spanish Patent and Trademark Office by the amendment introduced in Law 17/2001, of 7 December. It regulates the content of the application for revocation or invalidity, the evidence, facts and claims that the applicant must provide to substantiate their application, as well as the causes for its inadmissibility. It also describes the steps that must be followed to carry out the in-depth examination of the revocation or invalidity applications, the possibility of applying for evidence of use during the same and when the suspension and dismissal of these applications are agreed. The Royal Decree provides that this measure shall come into force on 14 January 2023.

You can access the full publication of the Royal Decree at this link.

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