On January 14, 2023, a new regulation governing invalidity and revocation proceedings in Spain will take effect, under which the Spanish Patent and Trademark Office (OEPM) will have jurisdiction to hear and decide invalidity and revocation proceedings relating to trademark and trade name registrations.
This shift away from court proceedings—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 January 14, such actions for invalidity and revocation may no longer be brought before civil courts, unless they are filed as a counterclaim in an infringement action.
Another new development is that decisions by the Spanish Patent and Trademark Office (OEPM) that exhaust the administrative remedies will be subject to review by the civil courts—not only those resolving new actions for nullity and lapse, but also those OEPM decisions resolving industrial property rights proceedings, including both applications and oppositions, whether relating to trademarks, trade names, designs, or patents.
This reform is expected to simplify legal actions and procedures, as well as reduce the costs of such procedures.
If you have any questions or would like more information, please contact your usual point of contact or send an email directly to elzaburu@elzaburu.es.
NULLITY
Under what circumstances may a nullity proceeding be initiated?
It may be requested on relative grounds or on absolute grounds.
The relative grounds that may be asserted to seek invalidation are essentially the same as those that may be invoked in opposition proceedings, in particular, prior rights recognized by law.
The absolute groundson which an action for annulment may be based are as follows:
- Whether the signs lack distinctiveness, are generic, descriptive, customary, misleading, or contrary to the law, public order, or public morals;
- Whether the signs consist exclusively of the shape or other characteristic dictated by the nature of the product or necessary to achieve a technical result, or whether they confer substantial value on the product—precisely because they are creations that would be more appropriately classified under other forms of industrial property, such as designs, industrial models, or patents;
- Signs that infringe upon designations of origin, geographical indications, traditional wine terms, guaranteed traditional specialties, and plant varieties that are protected under Union law or international agreements to which Spain is a party;
- That the symbols reproduce or imitate state emblems, official regulatory symbols, and emblems of intergovernmental organizations;
- That the marks in question were applied for in bad faith. Factors taken into account in determining whether this requirement is met include identity or similarity with prior marks, possible knowledge of a prior mark, a prior relationship with its owner, lack of intent to use the trademark, etc.
An application for invalidation may be filed against all the goods and services covered by the contested registration or against a portion thereof.
When can a nullity proceeding be initiated?
At any time, bearing in mind that the right to file an application for relative invalidity expires five years from the time the applicant for invalidity became aware of and tolerated the use of the sign sought to be invalidated.
Actions for absolute invalidity, on the other hand, are not subject to a statute of limitations and may therefore be filed at any time after the trademark is registered.
In what cases can this nullity proceeding not be initiated?
A relative nullity proceeding cannot be upheld if:
- The person seeking to initiate the proceeding has tolerated such use for a period of five consecutive years with knowledge of that use, unless the application was filed in bad faith;
- The party seeking to initiate the proceeding has expressly consented to the registration of that trademark.
For its part, proceedings for absolute nullity may not be initiated if:
- The mark lacked distinctiveness; it was descriptive, generic, or common at the time the application was filed, but it acquired distinctiveness for the goods and services for which it is registered prior to the filing date of the application for invalidation.
Who can initiate these nullity proceedings?
Generally speaking, you may file a petition for annulment,
- Any natural person or legally incorporated legal entity that considers itself aggrieved and has standing to sue, including—in certain cases and depending on the rights being asserted—certain groups or organizations representing manufacturers, producers, service providers, or merchants, as well as consumer or user associations.
- Holders of prior rights recognized by law, as well as licensees authorized to do so.
This procedure may be based on one or more prior rights, provided that they belong to the same owner.
What does it mean when a trademark is invalidated by the OEPM?
Except in those cases or circumstances expressly provided for by law, the trademark or trade name is deemed never to have had any legal effect—that is, as if it had never existed.
EXPIRATION DATE
Under what circumstances can one request the administrative revocation of a Spanish trademark or trade name?
The grounds on which a request may be made for the cancellation of a trademark are as follows:
- If, within five years from the date of its registration, the trademark or trade name has not been put to genuine use in Spain for the goods or services for which it is registered, or if such use has been suspended for an uninterrupted period of five years;
- That the trademark or trade name has, through the owner’s actions or inaction, become a common designation for the goods or services it distinguishes;
- That the use of the trademark by its owner or an authorized third party may mislead consumers, with particular emphasis on misrepresentations regarding its nature, quality, or geographic origin.
A declaration of expiration may be total or partial, covering all or part of the goods or services identified by the trademark.
Is it possible to start using or resume using a trademark to prevent it from expiring due to nonuse?
Yes, provided that such commencement or resumption does not occur within the three-month period immediately preceding the filing of the application for revocation and the trademark owner was aware that such an application might be filed.
Are there any justifiable reasons for the nonuse of a trademark?
Yes, circumstances beyond the owner’s control—such as import restrictions or other official requirements imposed on the goods or services for which the trademark is registered—will be recognized as justifiable grounds for non-use.
When does the declaration of a trademark's expiration take effect?
By default, the effects of revocation will be retroactive to the date of the revocation request. However, at the request of a party, the decision on the revocation request may set an earlier date on which any of the grounds for revocation mentioned above occurred.
Cristina Velasco, Junior Associate at ELZABURU