invalidity and revocation proceedings

Trade mark invalidity and revocation proceedings before SPTO

Trade mark invalidity and revocation proceedings to be heard by the Spanish Patent and Trade mark Office from 14 January 2023.

One of the most relevant changes brought about by the transposition of EU Directive 2015/2436 into Spanish law was that invalidity and revocation proceedings brought before the civil courts were to be exclusively heard by the Spanish Patent and Trade mark Office (SPTO). These measures will enter into force on 14 January 2023. In this article, we will discuss this jurisdictional modification.

The new procedure

Next month, trade mark invalidity and revocation actions will be brought directly before the SPTO and, in doing so, become purely administrative proceedings. Once the Office resolves the action, the administrative procedure will be exhausted and it will be necessary to appeal, where appropriate, to the civil courts. This is a major new development for professionals involved in the protection of third-party trade mark rights and, in a sense, means the courts will only have jurisdiction for trade mark infringement proceedings via counterclaims.

Trade mark invalidity actions

The invalidity of an intellectual property right is equivalent to the fact that this right never existed because it should not have been granted. Thus, the purpose of an invalidity action is both the cancellation of a registered sign and the loss of the rights associated with its registration.  

In this regard, there are different grounds for an invalidity action in Spain, for example, that the trade mark in question is identical or similar to an earlier mark, or that the registration has been made in bad faith on the part of the applicant.

Trade mark revocation actions

On the other hand, revocation means that the right is “extinguished” because some of the obligations required by law are not fulfilled, for example, when the trade mark is liable to mislead the public or when the sign has become the usual designation of a product or service for which it is registered. However, one of the most common grounds for revocation is the non-use of a trade mark.  

To prevent signs that are not being used in the market from hindering the registration of new trade marks and to avoid unjustified monopolies of use, the owner of a registered trade mark has a duty to use it. Otherwise, if a trade mark is not used for an uninterrupted period of five years, it is liable to be cancelled for non-use.

Objective of the new legislation

The main objective of this regulation is to harmonise national legislation with that of the European Union. Currently, the procedures for the invalidity and revocation of EU trade marks are processed by the European Union Intellectual Property Office (EUIPO) and not by the courts.

Beyond the doubts that this modification is raising, it seems clear that the offices themselves should be the ones resolving these matters, as they are specialised bodies in Industrial Property matters, thus avoiding the risk of encountering divergent judicial interpretations.

In this new scenario, the specialised sections of the Courts of Appeal will be competent to rule on appeals against all decisions of the SPTO, including those relating to the invalidity and revocation of trade marks.

In light of the above, Bird & Bird will be happy to answer any questions that may arise in relation to this new development, as we are more than ready to defend trade mark owners in this new framework of proceedings before the SPTO from January 2023.