The new Trademark Law Regulations require greater clarity when registering distinctive signs
Intellectual Property Alert
As a result of the transposition of Trademark Directive 2015/2436, both the Trademark Law as well as its implementing regulations have had to be amended accordingly. The reform of the implementing regulations, approved through Royal Decree 306/2019, of April 26, 2019 (published in the Official State Gazette last April 30), came into force on May 1, 2019.
What are the main changes made in the regulations?
Representation of the trademark
The new Trademark Law eliminated the requirement that a mark had to be capable of being represented graphically in order to secure protection.
The judgment handed down by the Court of Justice of the European Union in the Sieckmann case (2002) held that for a mark to be registered it had to be capable of being represented in a clear, precise, self-contained, easily accessible, intelligible, durable and objective manner.
These requirements are expressly set out in the new regulations. The aim is to help both the authorities and market agents determine which sign the proprietor of the trademark seeks to protect through registration.
The regulations identify the manner in which certain signs should be represented in order to secure registration, including: (a) word, (b) figurative, (c) three-dimensional, (d) position, (e) pattern, (f) color, (g) sound, (h) motion, (i) multimedia and (j) hologram trademarks.
Following in the wake of opposition proceedings against European Union trademarks, the regulations now determine the procedure that must be followed in cases in which the applicant of a trademark has required the opponent to prove the use of the mark on which it bases its opposition.
Invalidity and revocation proceedings
With the new Trademark Law, the Spanish Patents and Trademarks Office (OEPM) now has direct jurisdiction over applications for invalidity and revocation of Spanish trademarks. This important development will not come into force until January 2023.
The regulations establish the conditions to be met in invalidity and revocation proceedings, indicating, for example, the content of the application or the proof that the applicant considers relevant.