Following the entry into force of a new regulation on revocation and invalidity actions in Spain on 14 January 2023, the Spanish Patent and Trademark Office (SPTO) will now be the authority competent for handling and ruling on invalidity and revocations actions concerning trademark and tradename registrations.

This change to a non-judicial procedure, which stems from the implementation of Directive 2015/2436 on the approximation of the laws of the Member States relating to trademarks, means that as of 14 January, this type of invalidity and revocation action cannot be brought before the civil courts, unless it is brought in the context of an infringement action, by way of a counterclaim.

Another new feature is that the SPTO’s final decisions in administrative proceedings shall be appealable before the civil courts, not only those ruling on the new invalidity and revocation actions but also those decisions by the SPTO ruling on proceedings involving industrial property rights, both applications and oppositions, whether in relation to trademarks, tradenames, designs or patents.

This reform is expected to lead to a simplification of the actions and procedures, as well as a reduction in the cost of the proceedings.

Should you have any questions or require further information, you may address your enquiry to your usual contact person at the firm or send an e-mail to the address elzaburu@elzaburu.es.

INVALIDITY

Under what circumstances can invalidity proceedings be undertaken?

They may be brought on relative grounds or on absolute grounds.

The relative grounds that can be invoked to seek invalidity are essentially the same as those that can be invoked in opposition proceedings, in particular the earlier rights recognised by law.

The absolute grounds on which an invalidity action may be based are as follows:

• Signs which are devoid of distinctive character, generic, descriptive, customary designations, misleading or contrary to law, public policy or accepted principles of morality;
• Signs consisting exclusively of the shape or other characteristic which results from the nature of the goods themselves or which is necesssary to obtain a tecnical result or which gives substantial value to the goods (precisely because they are creations which would more appropriately come under other categories of industrial property, such as designs, industrial models or patents);
• Signs which infringe designations of origin, geographical indications, traditional terms for wine, traditional specialities guaranteed and plant varieties, which are protected under EU legislation or international agreements to which Spain is a party;
• Signs which reproduce or imitate State emblems, official signs and hallmarks indicating control and emblems of intergovernmental organizations;
• Signs which have been filed in bad faith. Among the factors taken into account in assessing whether this requirement is met are identity or similarity with earlier signs, possible knowledge of an earlier sign, prior relationship with the owner of the earlier sign, absence of any intention to use the mark, etc.

The application for invalidity may be directed against all of the goods and services covered by the contested registration or against part of the goods and services.

When can invalidity proceedings be brought?

At any time, bearing in mind that the possibility of filing an application for invalidity on relative grounds expires five years from the time when the applicant for invalidity became aware of and acquiesced in the use of the sign it is seeking to have invalidated.

Invalidity actions on absolute grounds, on the other hand, are not subject to any time bar and can therefore be brought at any time after registration of the mark.

Under what circumstances can invalidity proceedings not be brought?

There is no basis for invalidity proceedings on relative grounds if:

• The party that wishes to bring invalidity proceedings has acquiesced in the use of the mark for a period of five successive years while being aware of such use, unless the application was filed in bad faith;
• The party that wishes to bring invalidity proceedings expressly consented to the registration of the mark;

As for invalidity proceedings on absolute grounds, they may not be brought if:

• The sign was devoid of distinctive character, descriptive, generic or a customary designation on the filing date of the application but acquired distinctive character in respect of the goods and services for which it is registered prior to the date of filing of the application for invalidity.

Who can bring such invalidity proceedings?

In general terms, an application for invality may be filed by:

• Any natural or legally constituted legal person that considers itself to be aggrieved and has the capacity in its own name to sue or be sued, including, in certain cases and depending on the rights being invoked, certain groups or bodies representing manufacturers, producers, suppliers of services or traders, as well as consumer or user associations.
• The owners of earlier rights recognised by law, as well as duly authorized licensees.

The proceedings may be based on one or more earlier rights, provided that they are owned by the same party.

What does it entail when a trademark is declared invalid by the SPTO?

Except in those cases or circumstances expressly provided for by law, the trademark or tradename is deemed never to have had any legal effect, i.e., as if it had never existed.

REVOCATION

Under what circumstances can administrative revocation of a Spanish trademark or tradename be sought?

The grounds on which revocation of a trademark may be applied for are as follows:

• Where, within a period of five years from the date of its registration, the trademark or tradename has not been put to genuine use in Spain in respect of the goods or services for which it is registered, or where such use has been suspended for a continuous period of five years;
• Where the trademark or tradename has become, as a consequence of acts or inactivity on the part of its owner, the customary designation for the goods or services that it covers;
• Where the use of the trademark by its owner or an authorized third party is liable to mislead consumers, particularly as to the nature, quality or geographical origin of the goods or services.

The declaration of revocation may be total or partial, affecting all or part of the goods or services covered by the trademark.

Is it possible to commence or resume use of a trademark to avoid revocation on grounds of non-use?

Yes, provided that such commencement or resumption of use does not take place within the three-month period immediately prior to the filing of the application for revocation, with the trademark owner being aware that the application for revocation might be filed.

Are there grounds justifying non-use of a trademark?

Yes, circumstances beyond the control of the owner, such as import restrictions or other official requirements imposed on the goods or services for which it is registered, will be recognised as proper reasons for non-use.

When does the declaration of revocation of a trademark take effect?

By default, revocation will have effect dating back to the filing date of the application for revocation. However, at the request of one of the parties, an earlier date on which one of the aforementioned grounds for revocation occurred may be set in the decision on the application for revocation.

Cristina Velasco, Lawyer at ELZABURU