In just a few months, at the beginning of next year, a relevant legislative reform will come into force in Spain that affects the nullity and expiration procedures of Spanish trademarks: these, which have traditionally been processed before the civil courts, will be managed by the Spanish Patent and Trademark Office (OEPM). Thus, procedures for invalidity and expiration of EU trademarks will be compared to their counterparts, which are processed before the EU Intellectual Property Office (EUIPO) and not before judicial means. However, the Spanish civil courts will continue to be competent to hear actions for invalidity and expiration of trademarks that are filed by way of counterclaim in a civil procedure initiated by a claim for trademark infringement.
The reform was approved several years ago, in 2019, on the occasion of the transposition into Spanish law of a 2015 EU Trademark Directive, but due to its importance, its entry into force was postponed until January 14, 2023.
Legal professionals and some academics expressed their reservations about the new jurisdictional system at the time. Among other issues, the criticisms pointed to the important evidentiary ingredient that some trademark invalidity and expiration procedures may have (for example, in the case of nullity due to an application submitted in "bad faith"), for whose examination and assessment the OEPM lacked the extensive experience and the detailed regulatory framework that courts and judicial procedures have.
The aforementioned criticisms must have had some effect on the Spanish legislator, in view of the recent legislative reform (approved at the end of July 2022), which attributes to civil jurisdiction (in particular, to the specialized Sections of the Courts of Appeal ) the jurisdiction to hear appeals against all final resolutions of the OEPM (including, therefore, those relating to the nullity and expiration of trademarks) of the OEPM. This reform will also come into force on January 14, 2023.
This new scenario will force the specialized Sections of the Courts of Appeal to begin to get used to resolving appeals not only against the sentences handed down by the Commercial Courts, but also against the resolutions of an administrative body (the OEPM) issued within the framework of an administrative procedure whose rules and procedural particularities have until now remained outside the control of civil courts.
The Spanish legislator has justified this new distribution of powers based on the «high degree of experience in industrial property matters» of the specialized Sections of the Courts of Appeal, as well as "in the convenience of avoiding different jurisprudential criteria in this matter as two jurisdictional orders are competent, the contentious-administrative and the civil, thus favoring the principle of legal certainty".
Beyond the doubts that this reform of the jurisdictional framework in industrial property actions may raise about the suitability of the OEPM, on the one hand, and of the civil courts, on the other, to hear the aforementioned actions and resources, it does not seem debatable the usefulness of concentrating resources against todas the resolutions of the OEPM in the specialized Sections of the Courts of Appeal: the jurisprudential criteria on industrial property law in Spain will be unified, eliminating the hitherto possible divergent interpretations on the same or similar issues by the civil courts and of the contentious-administrative courts (including the corresponding civil and contentious-administrative Chambers of the Supreme Court).
Author Maria Cadarso
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