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On 14 January 2023, the transposition of Directive (EU) 2015/2436 to approximate the laws relating to trademarks was completed in Spain.

What does this mean?

Trademark invalidity and revocation actions may now be filed directly before the Spanish Patent and Trademark Office (SPTO) and not before civil courts, thus avoiding lenghty and costly legal proceedings.

On what grounds a trademark registration may be revoked or declared invalid?

A trademark registration may be declared invalid on the grounds that it is not distinctive, that it is misleading, that there is a risk of confusion with a previous trademark or that the trademark has been applied for in bad faith, among other grounds.

On the other hand, interested third parties may file for revocation of a trademark that has been registered for more than 5 years due to non-use in the last 5 years. In that case, the trademark titleholder must submit documents proving effective use in said period.

What are the advantages for trademark applicants?

In the event that there is a trademark registration that may interfere with the launch plans of a trademark, because it is identical or similar to the sign to be registered, a revocation action on the basis of non-use may be filed against said prior trademark, provided that it has been registered for more than 5 years. This could be a strategy to prevent said prior trademark from being a possible obstacle to the use and registration of the sign to be registered.

Moreover, if a third party has registered a trademark in bad faith, the affected party may file an invalidity action before the SPTO.

The main advantage of this amendment is that the trademark revocation and invalidity proceedings will be an administrative procedure instead of a court procedure, which will not only simplify and speed up proceedings but will also significantly reduce costs.

What does it mean for registered trademark titleholders?

Titleholders of registered trademarks must take into account that their trademarks that have been registered for more than 5 years are vulnerable to a revocation action on the basis of non-use, so third parties may file a revocation action on the basis of non-use before the SPTO to cancel their trademark registration.

Until now, court proceedings discouraged third parties from filing a revocation action on the basis of non-use. However, this new scenario will surely cause the number of these actions to skyrocket due to the simplification and cost reduction of the procedure.

The Ballester IP team remains at your disposal for any doubts or assistance you may need from us in relation to these new proceedings.

Author: Lucas Flores Dreosti

Ballester IP

Alicante, Spain

Plan de Recuperación, Transformación y Resiliencia - Financiado por la Unión Europea - NextGenerationEU