In recent years, trademark and patent law has become a realthorn in theside of the legal system. Yesterday’s issue of the Official State Gazette (BOE), dated July 28, right at the close of the judicial year, provides us with a new example of this peculiar phenomenon.
Organic Law 7/2022, passed by Parliament, stems, for our purposes, from a previous reform: the most recent amendment to the Trademark Law (2019), which announced the removal of trademark invalidity and revocation actions—currently handled by the Commercial Courts—from the judicial system and their conversion into an administrative proceeding before the Spanish Patent and Trademark Office (OEPM). This far-reaching change will not take effect until January 14, 2023.
Now the legislature, aware of the reservations that thisrevolutionhad sparked among some quarters—and almost as a form ofcompensation—is turning the tables once again with this new organic amendment: alldecisions by the Spanish Patent and Trademark Office, whether or not they relate to trademark invalidity and revocation proceedings, will be subject to review through civil courts rather than through the traditional contentious-administrative appeal.
As surprising as it may seem, jurisdiction over this new civil procedure for judicial review of SPTO decisions is assigned to the provincial courts, which thus see their scope of action expanded and will face procedural scenarios that had long been forgotten. An appeal against judgments issued by commercial courts is not the same as a single-instance proceeding arising from prior action by an administrative body.
As you might expect, this change is timed to coincide with the previous one and will not take effect until January of next year. And this is not a transitional period to be taken lightly.
Indeed, the hiatus that will last until January will require professional firms to take time to reflect, because the professionals who traditionally represent clients before the Spanish Patent and Trademark Office (OEPM) are industrial property agents, while those who appear before the provincial court are attorneys. Those hybrid firms that employ both types of professionals are poised to gain a competitive advantage in this new landscape.
But at the same time—and more importantly—the reform requires companies to take a strategic, case-by-case approach to determine to what extent it is preferable to ensure that an action for the invalidation or revocation of a trademark is handled through court proceedings rather than administrative proceedings, by filing such an action before the law takes effect. The fact is that, depending on the circumstances, this procedure before the Spanish Patent and Trademark Office (OEPM) can have as many advantages as it does disadvantages.
A new challenge for all of us in this process of jurisdictional deconstruction of industrial property, to which we have already become accustomed.
Author: Enrique Armijo Chávarri
This article first appeared in Cinco Días (JUL/2022). https://cincodias.elpais.com/cincodias/2022/07/28/legal/1659010274_560496.html