SPAIN: An Introduction to Intellectual Property: Trade Marks

A year has passed since the entry into force of the Spanish Trade Mark Act’s reform resulting from the Royal Decree-Law No 23/2018, of 21 December, which transposes the EU Directive 2015/2436 relating to trade marks.

This regulation brought about changes in the processing of national trade marks, towards the European Union trade mark system, and thus the Spanish Patent and Trade Mark Office (OEPM) acquires competence for trade mark invalidity and revocation proceedings and its decisions are reviewed by the courts. Please note that, before this modification, the OEPM lacked competence on these actions, which were reserved for the national civil courts.

Invalidity or Revocation of Trade Marks Before the OEPM

Any claims for the invalidity or revocation of national trade marks shall now be the responsibility of the OEPM, except for those actions which are raised as a counterclaim in the frame of a trade mark infringement action before the national courts.

This requires a desirable co-ordination between courts to articulate the functioning of the administrative and judicial systems. Not only shall the courts dismiss any counterclaim on the grounds of invalidity or revocation of the trade mark if there is a previous final decision of the OEPM, on the same matter, cause of action and parties; but also the OEPM shall dismiss any invalidity or revocation application if a final court decision has already been issued.

In the event that there is not yet a final decision, but the proceedings are pending before the OEPM or the courts, and unless there are no special reasons for continuing the proceedings, the second body hearing the validity of the trade mark shall suspend its ruling ex officio, after hearing the parties, or at the request of a party and after hearing the other parties.

With regard to both applications before the OEPM, a deadline for the issuance of a decision is set by law. Within a period of 24 months since the receipt of the application (and not from the admission for processing), the Office must resolve a trade mark invalidity case, which is reduced to 20 months if it concerns a revocation trade mark application.

Should there not be a decision of the OEPM within these periods, the application shall be considered rejected by negative administrative silence. In any case, the decision might be appealed for its revision on the merits before the Office’s Director.

The OEPM has issued some guidelines on the invalidity and revocation proceedings which may be accessible on its website, and has also updated the information on the proof of use, absolute and relative grounds for trade mark invalidity.

Revision of the OEPM’s Decisions Before the Civil Courts

While there is a de-judicialisation of those nullity and revocation proceedings of national trade marks, a judicial specialisation is being encouraged for reviewing the OEPM’s decisions. That is, those final decisions which deal with trade mark and other industrial property rights, and terminate the administrative procedure, have been transferred to the Spanish Civil Courts.

This modification aims to increase efficiency and jurisdictional quality by reducing the number of competent courts and reserving their knowledge to a few courts with greater expertise in intellectual property rights. It is hoped that this will result in a more critical analysis of the decisions of the OEPM, which until now enjoyed an excessive presumption of validity by courts that were not specialised.

This competence is conferred to the specialised sections of some Provincial Courts in the civil order as provided for in Article 82bis.3 of the Spanish Organic Law of the Judiciary, the Provincial Court of the plaintiff’s domicile being concretely competent, provided that the General Council of the Judiciary has agreed to exclusively assign the Commercial Courts in that locality the examination of intellectual property cases, as A Coruña, Barcelona, Bilbao, Granada, Las Palmas de Gran Canaria, Madrid and Valencia.

Alternatively, the plaintiff may lodge the claim, at their option, before the Provincial Court of Madrid according to the OEPM’s headquarters location, where Section 32 of the Court has been enabled for this purpose.

In short, this means that compared to the 17 previously competent courts that lacked specialisation in intellectual property rights, now these matters have only been assigned to seven courts that are specialised. These cases are processed through so-called verbal proceedings, which involve a declaratory process that contemplates the following main stages: (i) notice of appeal; (ii) written claim with all the evidence; (iii) admission of the claim and subsequent service to the defendant/s; (iv) written defence with documents; and (v) the judgment.

Only if requested by any party and accepted by the court, a hearing might take place before the judgement.

Exhaustiveness of the Factual and Legal Grounds of Appeal

According to the above section, the first cases following this new scheme have started to demonstrate greater agility with regards to the procedural handling of cases by the courts, without compromising the quality of the judicial response.

It remains to be seen what criterion the Provincial Courts will adopt with regard to the facts and/or legal grounds that may be raised in the civil claim, in comparison with those previously put forward by the party in the administrative proceedings before the OEPM.

In other words, shall new pleas in law be accepted by the court? Or must the plaintiff confine itself to raising the same pleas in law as those analysed by the OEPM?

The same doubts might arise as to the facts alleged and evidence submitted, in the sense that certain factual circumstances are sought to be introduced in the claim even though they were not raised in the previous administrative procedure.

A response that advocates permissibility, at a certain point, requires a differentiation between “new issues and new pleas in law”. Indeed, new pleas in law which have not previously been raised before the OEPM’s proceedings may not be latterly brought before a court since its modification entails an alteration of the contested decision, as long as those pleas were not taken into account by the Office.

However, this may not be the case when adding “new issues” in the claim, as the plaintiff may be able to include different legal arguments in support of the claim.