On 14 January, the reform of the Trademark Law and its Implementing Regulations came into force. It contains a large number of changes with respect to the Law we already knew. Today we will comment on some of the most important changes.

Reasons for its implementation

As we have been suffering for several years, the biggest problem in Spain with regard to trade marks has been the tediousness of accessing any of the procedures that the previous regulations offered due to their slowness, as well as the difficulty of registering a trade mark created through the use of one of the new technologies, as these were not even contemplated.

This Law, stemming from the transposition of Directive (EU) 2015/2436 and its idiosyncratic procedural regulations, has the further objective of making all procedures faster, using telematic means to simplify them.

Invalidity and revocation proceedings for distinctive signs

Prior to the entry into force of this reform, proceedings for the invalidity and revocation of national distinctive signs were the responsibility of the commercial jurisdiction, which only further delayed proceedings due to the already well-known saturation of our jurisdictional system.

However, since the reform of the Law came into force, the Spanish Patent and Trademark Office (SPTO) itself will be competent to hear this type of proceedings, bringing this system into line with that which had already been in place for years within the European framework, where the European Patent and Trademark Office (EUIPO) was competent to hear invalidity and revocation proceedings for European distinctive signs. However, this reform has only taken place in the first instances of our commercial jurisdiction since, in the event that it is considered that a certain decision of the SPTO should be appealed, it will be certain sections of the Provincial Courts specialised in Commercial Law that will hear the appeals.

Concept of trademark and new types of trademarks

This is probably another of the most important changes that have taken place in the reform of the Trademark Act, the main objective of which is to adapt our legislation to the new reality based on new technologies. The reform indicates a new definition of the concept of trademark, stating that:

"Any sign, especially words, including personal names, designs, letters, numerals, colours, the shape of goods or of their packaging, or sounds, may constitute a trade mark, provided that such signs are capable of:

(a) distinguish the goods or services of one undertaking from those of other undertakings, and
(b) be represented in the Register of Marks in such a way as to enable the competent authorities and the general public to determine the clear and precise subject matter of the protection granted to its proprietor"

Before the reform, the Law required the trademark to have a graphic representation, but, as we have been able to observe in this new wording, the requirements now revolve around the fact that it can be represented in the Trademark Register.

What could, a priori, be a merely conceptual change, is of great importance in practice, since with this new definition new types of marks have appeared, such as the multimedia mark, and the new marks should not be reduced to being considered only word, graphic or mixed marks.

In short, the new Trademark Law has brought a large number of changes to the procedures that had been followed, simplifying and streamlining them. However, before starting with the registration of any of them, it is important to get information and consult a professional. Belzuz Abogados has been specialising in Trademark Law for years, advising its clients in this area. Therefore, do not hesitate to contact us with any questions that may arise in this area.

 Adrián Fraguas García 

Departamento Derecho mercantil y societario | Madrid (España)

Belzuz Abogados SLP

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