New Trademark Legislation in Spain
- Spain
- 01/31/2002
New trademark legislation has been enacted in Spain, and was published in Spain´s official bulletin (BOE) on December 8, 2001. The new legislation will enter into effect entirely on July 31, 2002, although certain provisions have already taken effect as of December 9, 2001. The motivation for the new legislation is three-fold. First, a 1999 judgment regarding the allocation of administrative authority in intellectual property matters between Spain´s national government and its autonomous communities has been incorporated into the new legislation. Second, several changes have been made to harmonize Spain´s current trademark legislation with existing legislation at the European and international levels. Finally, certain procedures and practices have been modified, based on experience under Spain´s current trademark law, to make its application more efficient for professionals practicing in this area as well as interested parties seeking protection.
Regarding administrative authority to receive trademark applications, the provisions of the 1999 judgment incorporated into the new law will allow applications to be presented in all but two of Spain´s autonomous communities where (1) the applicant is domiciled or maintains a significant and active industrial or commercial establishment, or (2) the applicant´s industrial property agent is domiciled or maintains a significant and active commercial branch. If the autonomous community in question does not provide trademark application services, or if the applicant does not meet the above criteria, then the application should be presented to the Spanish Office of Patents and Trademarks.
Several important substantive and procedural changes have also been effected under the new legislation. Beginning July 31, 2002, a new multi-class application will go into effect which will allow applicants to seek protection under several international classes with respect to specified products or services without the need to apply separately in several international classes for the same products or services.
The most significant procedural change will occur in the area of application denial. In the past, the Spanish Office of Patents and Trademarks initiated the denial of applications based on applicable grounds. Under the new legislation, this responsibility will shift to the interested third party whose rights may be affected by a subsequent application to initiate opposition, with the role of the Spanish Office of Patents and Trademarks being limited to publishing applications and notifying interested parties of applications which may affect their rights. This is a primary example of a change made to bring Spanish trademark legislation in harmony with trademark legislation at the European level. Another point of harmonization with trademark legislation at the European level pertains to the concept of partial use. Effective December 9, 2001, real and actual use of a mark will only be considered that which corresponds to the products and services covered by the mark´s registration.
Under the new legislation, opposition to an application can be made on several grounds. An opposition may be substained on “absolute” grounds pertaining to public-interest justifications for denying the application. An opposition may be sustained on “relative” grounds pertaining to the application´s affect on the rights of a third party. The new law also allows for opposition to be made by parties whose rights are not registered in Spain based on the grounds that the subsequent application affects their rights, and although not registered in Spain, the mark of the opposing party is widely known and recognized in the particular sector of goods and services in question, or is widely known and recognized publicly even though the subsequent application pertains to goods or services in a sector other than that of the opposing party. Finally, opposition may be sustained by non-mark holders on grounds such as the application´s unauthorized use of an individual´s name, surname or pseudonym, or that the application infringes a copyright or other intellectual property right.
While the traditional remedies available in defense of trademark rights under the prior legislation remain, several new remedies have been added by the new legislation. These new remedies include: (1) the right of a mark holder to make a claim for the destruction and/or cessation of the distribution of goods or services associated with an infringing mark, (2) the removal in many cases of the requirement to give a pre-claim notice to the infringing party, (3) the setting of minimum damages available to the aggrieved party in an amount equal to one percent of the business – it is assumed this equates with sales – generated in infringement of the rights of the aggrieved party, and (4) the imposition of a fine on the infringing party for each day that the infringing conduct continues.
Renewal of an application will no longer require submission of proof of public use of the mark. However, the requirement for real and actual use under the prior legislation has been maintained. Accordingly, the holder of a registered mark remains exposed to the loss of its rights if it can be demonstrated that no real or effective use of the mark has been made within five years from the date the registration was granted, or that the use of the mark has been suspended for an uninterrupted period of five years. These same grounds may be used as a defense against a claim made by an alleged aggrieved party against an alleged infringer. Finally, with respect to mark nullifcation or expiration, the new legislation envisions partial as well as total extinction of the mark. Accordingly, if the justification for nullification or expiration of the mark only applies to a portion of the products and services related to the mark, the nullification or expiration will only be extended to the products or services to which the justification applies.
