In just a few months, early next year, a significant legislative reform affecting the procedures for the invalidation and revocation of Spanish trademarks will take effect in Spain: these procedures, which have traditionally been handled by civil courts, will now be managed by the Spanish Patent and Trademark Office (OEPM). This will bring them in line with their EU counterparts—trademark invalidation and revocation proceedings in the EU, which are handled by the European Union Intellectual Property Office (EUIPO) rather than through the courts. However, Spanish civil courts will continue to have jurisdiction over trademark invalidity and revocation actions filed as counterclaims in civil proceedings initiated by a trademark infringement lawsuit.
The reform was approved several years ago, in 2019, as part of the transposition into Spanish law of a 2015 EU directive on trademarks, but due to its significance, its entry into force was postponed until January 14, 2023.
Legal professionals and some academics expressed their reservations about the new judicial system at the time. Among other issues, the criticism focused on the significant evidentiary component that some trademark invalidity and revocation proceedings may involve (for example, in cases of invalidity based on a petition filed in “bad faith”), for the examination and assessment of which the Spanish Patent and Trademark Office (OEPM) lacked the extensive experience and detailed regulatory framework possessed by the courts and judicial proceedings.
The aforementioned criticisms must have had some effect on Spanish lawmakers, given the recent legislative reform (approved in late July 2022), which grants civil courts (specifically, the specialized divisions of the Courts of Appeal) jurisdiction to hear appeals against all final decisions of the Spanish Patent and Trademark Office (SPTO) (including, therefore, those concerning the invalidity and expiration of trademarks). This reform will also take effect on January 14, 2023.
This new situation will require the specialized divisions of the Courts of Appeals to begin adapting to ruling on appeals not only against judgments handed down by the Commercial Courts, but also against decisions issued by an administrative body (the OEPM) in the context of administrative proceedings whose procedural rules and particularities have, until now, remained outside the purview of the civil courts.
The Spanish legislature has justified this new distribution of jurisdiction based on the “high level of expertise in industrial property matters” possessed by the specialized divisions of the Courts of Appeal, as well as “the desirability of avoiding differing jurisprudential standards in this area, given that two branches of the judiciary—the contentious-administrative and the civil—have jurisdiction, thereby promoting the principle of legal certainty.”
Beyond the doubts that this reform of the jurisdictional framework for industrial property proceedings may raise regarding the suitability of the OEPM, on the one hand, and the civil courts, on the other, to hear such proceedings and appeals, the usefulness of concentrating appeals against all OEPM decisions in the specialized divisions of the Courts of Appeal seems indisputable: this will unify the case law criteria regarding industrial property law in Spain, eliminating the previously possible divergent interpretations of the same or similar issues by civil courts and administrative courts (including the corresponding civil and administrative chambers of the Supreme Court).
Author: María Cadarso