Trade and Service Marks
– The Spanish Trademark Act (Law 17/2001 of December 7, 2001) was published in the Official State Gazette of December 8, 2001, as amended by Law 20 of July 7, 2003, Law 19 of June 5, 2006, and Law 53 of December 28, 2007. The Act came into force overall on July 31, 2002, although the provisions contained in Title V (Articles 34 to 50) of the Act (Content of the Trademark Right) came into force on December 9, 2001. The Act lays down a specific framework for both trademarks and trade names. Titles of establishment are not contemplated under the Act although current registrations shall be maintained temporarily, pursuant to the provisions set out in Transitional Provisions Three and Four of the Act. The Act was further amended by Royal Decree-Law 23/2018 of December 21, 2018 transposing Directive (EU) 2015/2436 of the European Parliament and of the Council of December 16, 2015 to approximate the laws of the Member States relating to trademarks.
– Royal Decree-Law 23/2018 of December 21, 2018, transposing directives on trademarks, rail transport, package tours and related travel services, published in the Official State Gazette No. 312 of December 27, 2018.
– Royal Decree 687/2002 of July 12, 2002, approving the Implementing Regulations to the Trademark Act, Law 17/2001 of December 7, 2001, published in the Official State Gazette No. 167 of July 13, 2002.
– The Industrial Property Registry, now called the Spanish Patent and Trademark Office, is regulated by the Law of May 2, 1975, supplemented by the Regulations approved by Royal Decree 1270 of July 24, 1997.
– Article 274 of the Criminal Code of November 23, 1995, as amended under the Revised Criminal Code (Organic Act No. 1/2015).
– Act 19/2006 of June 2006, expanding measures for enforcement of intellectual and industrial property rights and establishing rules of procedure to enable application of several Community regulations.
– Royal Decree 1431/2008 of August 29, 2008 amending certain regulatory provisions relating to industrial property.
Note: the amendments to the Trademark Act introduced by Royal Decree-Law 23/2018 entered into force on January 14, 2019, with two exceptions: (1) Paragraphs 3, 4, 5 and 6 of Article 21 of the Trademark Act, concerning the entitlement of the applicant to require the opposing party, who is the proprietor of an earlier mark, to furnish proof of genuine use of the same or show that there are proper reasons for non-use, will enter into force when the corresponding implementing regulations enter into force. (2) The second paragraph of the first additional provision of the Trademark Act, concerning the jurisdiction of the Spanish Patent and Trademark Office to invalidate and revoke the distinctive signs regulated by the Trademark Act, which will enter into force on January 14, 2023.
Membership in International Conventions
– Convention Establishing the World Intellectual Property Organization (WIPO), since April 26, 1970.
– Paris Convention for the Protection of Industrial Property, Stockholm Act of July 14, 1967, in force since 1974.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since September 25, 1978.
– Madrid Agreement Concerning the International Registration of Marks, Stockholm Act, in force since 1979.
– Madrid Agreement for the Repression of False or Deceptive Indications of Origin, Lisbon Act of October 31, 1958, in force since 1973.
– Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, since 1966.
– European Union Trade Mark Regulation.
– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks of June 27, 1989, in force since April 1, 1996.
– WTO’s TRIPS Agreement, in force since January 1, 1996.
– Trademark Law Treaty (Geneva, 1994), in force since March 17, 1999.
– Singapore Treaty on the Law of Trademarks, in force since May 18, 2009.
Applicant: trademark applications may be filed by natural or legal persons, including entities governed by public law.
Foreigners not resident in a member State of the European Union: to apply for registration of trademarks, they must appoint a Spanish patent agent.
Residents of a member State of the European Union: may act for themselves, but if they do not have an address or business office in the territory of Spain, they must designate a mailing address in Spain for notification purposes, or, alternatively, indicate that all notifications be sent to them by e-mail or another means of communication available at the Spanish Patent and Trademark Office.
Trademarks of foreigners: foreigners who are nationals of a member country of the Paris Union Convention have the same rights as Spanish nationals; otherwise, they will be subject to the provisions of a bilateral convention between Spain and their country or, in the absence of such a convention, to the principle of reciprocity. Trademark protection is also open to nationals of member countries of the World Trade Organization.
Kinds of protection: (1) independent or principal trademarks, which are signs that are capable of distinguishing the goods or services of one undertaking from those of other undertakings and capable of being represented on the Register of Trademarks in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor. This includes, in particular, words, personal names, designs, letters, numerals, colors, the shape of goods or the packaging of goods and sounds; (2) collective trademarks are those obtained by associations of producers, manufacturers, merchants or suppliers of services for their use by the members of such associations, in accordance with the corresponding user regulations, which serve to distinguish the goods or services of the members of the association which is the proprietor of the mark from the goods or services of other undertakings; (3) certification trademarks are those signs that serve to distinguish the goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, geographical origin, quality, accuracy or other characteristics, from goods and services which are not so certified; (4) international trademarks (those deposited under the 1891 Madrid Agreement, signed by Spain in its 1967 Stockholm version and the Madrid Protocol, signed by Spain on June 28, 1989, in force since April 1, 1996); the deposit of an international mark is equivalent to the filing of a national Spanish application and it is prosecuted, up to its grant, by the same procedure as Spanish marks.
Classes: each trademark application may cover one or more classes of goods or services of the International Classification.
Marks for services: accepted in practice in Spain since December 15, 1966, when the Nice Agreement on the International Classification of Goods and Services came into force.
“Well-known” marks: although the right in a trademark is only acquired through registration thereof, the Law admits that an unregistered trademark which is well-known in Spain within the meaning of Article 6bis of the Paris Convention may serve as the basis for an administrative opposition against a later trademark application, in addition to preventing use of the later mark where there is a likelihood of confusion.
Concept and scope of protection of well-known marks: the Act affords greater protection to registered well-known and reputed trademarks and trade names, which may serve as a basis for preventing registration as a trademark of a sign which is identical or similar to an earlier trademark or trade name, even when the goods or services claimed in the application are not similar to those for which the earlier signs have been registered, where by reason of the well-known nature of the earlier signs in Spain in the case of a national trademark, or in the European Union, in the case of an EU trademark, the use of the later trademark, without due cause, would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark. A well-known trademark or trade name is one which, as a result of the volume of sales; of the duration, extent, or geographic scope of use; of the value or prestige attained in the market place; or for any other reason is broadly known to the pertinent sector of the public for the goods, services, or activities covered by the said trademark or trade name. The greater the degree of knowledge of the trademark or trade name in the pertinent sector of the public or in other related sectors, the more dissimilar in nature may be the goods, services, or activities to which the protection shall extend. Where trademarks or trade names are familiar to the public in general, they shall be deemed to be reputed, and the scope of protection shall extend to all goods, services, or activities.
Novelty: trademarks must be new in relation to previously registered ones; for this purpose there is an opposition procedure, to prevent registration of marks which are identical or similar to earlier ones.
Not registrable: Absolute prohibitions on registration: the following signs shall not be registrable as trademarks: (a) those which do not conform to the definition of a trademark as laid down in the Act; (b) those devoid of distinctive character; (c) those which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or time of production of the goods or rendering of the service, or other characteristics of the goods or service; (d) those which consist exclusively of signs or indications which have become customary designations for the goods or services in the current language or in the bona fide and established practices of trade; (e) those consisting exclusively of the shape, or another characteristic, which results from the nature of the goods themselves, or consisting of the shape, or another characteristic, of goods which is necessary to obtain a technical result, or consisting of the shape, or another characteristic, which gives substantial value to the goods; (f) those which are contrary to law, public policy, or accepted principles of morality; (g) those which are of such a nature as to deceive the public, for instance as to the nature, quality, or geographical origin of the goods or service; (h) those which are excluded from registration pursuant to national legislation or Union legislation or to international agreements to which the Union or Spain is party, providing for protection of designations of origin and geographical indications; (i) those which are excluded from registration pursuant to Union legislation or international agreements to which the Union is party, providing for protection of traditional terms for wine; (j) those which are excluded from registration pursuant to Union legislation or international agreements to which the Union is party, providing for protection of traditional specialties guaranteed; (k) those which consist of, or reproduce in their essential elements, an earlier plant variety denomination, registered in accordance with Union legislation or national legislation, or international agreements to which the Union or Spain is party, providing protection for plant variety rights, and which are in respect of plant varieties of the same or closely related species; (l) those which reproduce or include, without proper consent, the armorial bearings, flags, decorations, and other emblems of Spain or Spain's Autonomous Communities, municipalities, provinces, or other local entities; (m) those which have not been authorized by the competent authorities and are to be refused pursuant to Article 6ter of the Paris Convention; (n) those which include badges, emblems or escutcheons other than those covered by Article 6ter of the Paris Convention and which are of special public interest, unless the competent authorities have consented to registration. A trademark that comes under the absolute prohibitions on registration set out in points (b), (c) or (d) shall not be refused registration if it has acquired distinctive character through the use made of the same before the date of grant of registration. Relative prohibitions on registration: (a) signs identical to an earlier trademark covering identical goods or services; (b) marks which are identical or similar to an earlier trademark application or registration designating identical or similar goods or services, in such a way that they may lead to confusion in the marketplace or give rise to a risk of association with the earlier mark; previously registered trade names and titles of establishment will also be taken into consideration for these purposes; (c) trademarks that may give rise to confusion, as established in point (a), with unregistered trademarks which are "well-known" in Spain within the meaning of Article 6bis of the Paris Convention; (d) the legal name or the image identifying a person other than the applicant, unless there is proper consent; (e) the names, surnames, pseudonyms or any other sign which, to the general public, identifies a person other than the applicant, unless there is proper consent; (f) signs which reproduce, imitate or adapt creations protected by copyright or other industrial property right different from trademarks and trade names, without proper consent from the holder of the right; (g) trademarks that may cause confusion with the trade name, name or corporate name of a legal person (even where it has not been registered with the Spanish Patent and Trademark Office) which has been used or is well-known in the territory of Spain; (h) the name, surname, pseudonym or any other sign identifying the applicant where it comes under any relative or absolute prohibitions on registration; (i) where an application for a designation of origin or geographical indication has been submitted in accordance with national legislation or European Union legislation prior to the date of application for registration of the trademark or the date of priority claimed for the application, subject to the subsequent registration of the designation of origin or geographical indication, and that designation of origin or geographical indication confers on the person authorised under the relevant legislation the right to prohibit the use of a subsequent trademark with those characteristics; (j) the agent or representative of a third party who is the proprietor of a mark in another country of the Paris Union may not register it in his name, without said third party's authorization.
Priorities: it is possible to claim the foreign priority of a trademark application under the Paris Convention within the term of six months established there; for this it is necessary to state on the application the filing date and country of filing of the priority application and if possible the filing number of the priority application as well. In addition, a copy of the earlier application, certified by the Office of the country of origin, and stating the filing date of the priority application, is to be filed within three months of the application date. The said copy is to be accompanied by a certificate attesting to the filing date of the earlier application issued by the Administration with which the priority application was filed and a translation into Spanish if the said priority application was filed in another language.
Classification: International Classification of Goods and Services established by the Nice Agreement of June 15, 1957.
Territory covered: the Spanish mainland, Balearic Islands, Canary Islands and the territories of Ceuta and Melilla on the north coast of Africa.
Filing requirements for an application (to be sent to resident agent):
1. Information identifying the applicant;
2. Power of attorney;
3. 4 prints of the mark;
4. Goods or services to be covered and class or classes in which they fall;
5. Description of the mark (optional or for three-dimensional trademarks when the reproduction of the mark is deemed insufficient to illustrate its features);
6. Indication, if pertinent, of priority claimed.
Filing without power of attorney: possible, but the power must be filed subsequently within two months if the applicant’s address is located outside the territory of Spain.
Filing without some requirements (telegraphic order): possible, but it is indispensable to identify the applicant, mark (word, device or combination of both) and goods or services to be covered.
Electronic filing: possible.
Electronic signatures: are accepted.
Requirements for conversions of European Union trademarks (EUTMs): within two months of receipt by the national office of a request for conversion of an EUTM application or registration into a Spanish national application, the applicant shall fulfill the following requirements:
(a) Pay the application fee for each class of goods or services contained in the EUTM application or registration included in the conversion;
(b) File a Spanish translation of the request for conversion and accompanying documents if they are not originally written in Spanish;
(c) Designate an address for service in Spain;
(d) Submit 4 reproductions of the trademark if the trademark is a device mark or contains design elements.
Requirements for transformation of an international registration: within three months of cancellation of an international registration, pursuant to Art. 6.4 of the Madrid Protocol, the applicant for transformation shall file application for national registration in each class of goods or services covered by the international registration that has been included in the application for transformation. Such applications shall fulfill all the same requirements as national applications.
Procedure at the Trademark Office: an application to register a trademark may be filed with the Spanish Patent and Trademark Office or with the competent body of the Autonomous Community in which the applicant's representative has his domicile or a real and effective office branch or in which the applicant has his domicile or a real and effective establishment. Upon filing, the receiving body will conduct a formal examination of the application and shall communicate any possible irregularities to the applicant so that they may be corrected.
Publication: if the examination is passed successfully or after any irregularities have been corrected, the Office will have an advertisement of filing published in the Official Industrial Property Gazette.
Opposition: publication will open a two-month period during which all parties who hold themselves to be prejudiced may oppose the application. If the opposition is based on fulfillment of the dual conditions of the new trademark being identical to an earlier trademark and claiming identical goods/services, on a likelihood of confusion or on the risk that the new trademark could take unfair advantage of, or be detrimental to, the repute or distinctive character of the earlier trademark, an opposition may be filed by the proprietor of the earlier rights or by licensees who are expressly authorized to file opposition.
Substantive examination: pursuant to the publication of the application the Trademark Office will conduct a substantive examination of the application to determine whether the application is in breach of any absolute prohibition or if it comprises a name, surname, pseudonym or any other sign that identifies a person other than the applicant to the general public. Where no oppositions are filed and where the application successfully passes the substantive examination, the trademark will be granted registration. If any oppositions are filed or the official examination results in an objection, an official action will be issued and notice thereof published in the Official Gazette so that the applicant may submit defensive arguments within one month; following the applicant’s reply to the official action, the Trademark Office will issue a decision granting or rejecting registration of the mark.
Amendment of application: the applicant may at any time withdraw his trademark application or limit the list of goods or services claimed in the application. A trademark application may be amended at the applicant’s request only by correcting the applicant’s name and address, errors in wording or copying, or obvious mistakes, provided that such correction does not substantially change the trademark or extend or change the list of goods or services. Additionally, elements that do not appreciably alter the distinctive character of the trademark as filed may be deleted.
Disputes about ownership: issues concerning ownership of marks are of a civil nature and jurisdiction to deal therewith does not correspond to the Trademark Office, but to the ordinary law courts.
Appeal: an administrative appeal from a decision granting or rejecting registration of a mark may be filed with the Director of the Trademark Office within one month. From an express decision or a tacit dismissal (absence of an express decision within three months) of an administrative appeal, it is possible to lodge a contentious-administrative appeal with the special courts of that jurisdiction.
Publication: notice of the decision granting or rejecting registration of a trademark is published in the Official Gazette and opens the term for the filing of an administrative appeal.
Correction of registration: a trademark shall not be altered on the Register either during the period of registration or upon renewal thereof. Nevertheless, where the trademark includes the name and address of the proprietor, any alteration or deletion thereof not substantially affecting the identity of the trademark as originally registered may be made at the request of the proprietor.
Delivery of document: once a mark is granted the certificate of registration will be issued.
Beginning of protection: from the grant of the registration, although the rights go back to the filing date of the corresponding application; the Law affords provisional protection, from the date of publication of an application in the Official Gazette and even to before publication of the application if infringers are duly notified of the filing of the application and of the content of the trademark; this protection consists of the right to reasonable compensation, adequate to the circumstances, demandable of any third party who, between that date and the date of publication of the grant, might have made a use of the mark which would be prohibited after that period.
Kind of property: the registration of a trademark confers on the proprietor exclusive rights, including entitlement to prevent all third parties not having his consent from using in the course of trade, in relation to goods and services, any sign where that sign is identical and is used in relation to identical goods or services, where there is a likelihood of confusion or where there is a risk that the sign could take unfair advantage of, or be detrimental to, the repute or distinctive character of the trademark. This entitlement to prevent use of the sign includes: affixing the sign to the goods or to the packaging thereof; offering the goods, putting them on the market, or stocking them for those purposes under the sign, or offering or supplying services thereunder; importing or exporting goods under the sign; using the sign as a tradename or company name or part of a tradename or company name; using the sign on business papers and in advertising; using the sign on computer communications networks or as a domain name; using the sign in comparative advertising in a manner that is contrary to Directive 2006/114/EC. Where the risk exists that the packaging, labels, tags, security or authenticity features or devices, or other any means to which the mark is affixed, could be used in relation to goods or services and that use would constitute an infringement of the rights of the proprietor of a trademark in accordance with the preceding paragraph above, the proprietor of that trademark shall also have the right to prohibit the act of affixing a sign identical with, or similar to, the trademark on packaging, labels, tags, security or authenticity features or devices, or any other means to which the mark may be affixed, and the acts of offering or placing on the market, or stocking for those purposes, or importing or exporting packaging, labels, tags, security or authenticity features or devices, or any other means to which the mark is affixed. The proprietor of a trademark shall also have the right to prevent all third parties from bringing goods into Spain, in the case of goods in transit not intended for sale in Spain, where such goods or the packaging thereof come from third countries and bear a trademark which is identical with the trademark registered in respect of such goods, or which cannot be distinguished in its essential aspects from that trademark. This right shall lapse if, during the proceedings to determine whether the registered trademark has been infringed, initiated in accordance with Regulation (EU) No. 608/2013, evidence is provided by the declarant or the holder of the goods that the proprietor of the registered trademark is not entitled to prohibit the placing of the goods on the market in the country of final destination. The proprietor of a registered mark can prevent merchants or distributors from removing the mark without his consent, but may not prevent them from adding marks or distinctive signs of their own separately; neither may he prohibit third parties from using the mark on goods put in the market place in the European Economic Area by him or with his consent nor prevent use of the mark by third parties when this is necessary to indicate the intended purpose of a product or service (particularly in the case of accessories or spare parts).
Duration – extension: (a) trademarks filed before May 12, 1989, which were regulated under the former Industrial Property Act, were granted for twenty years. Upon their first renewal, they became subject to the present Trademark Act, and from that moment their duration was ten years; (b) trademarks filed between May 12, 1989 and July 31, 2002, are granted for ten years from the filing date of the corresponding application and are indefinitely renewable for further ten-year periods; (c) trademarks filed from July 31, 2002, shall be granted for ten years from the filing date of the corresponding application and shall be indefinitely renewable for further ten-year periods. Grace period: if settlement is not effected within that period, taxes will still be payable subject to a surcharge of 25% during the next three months or a surcharge of 50% during the following three months.
Compulsory character of registration: registration of trademarks is not compulsory, however, it is extremely advisable, as the right in a mark is only acquired through registration thereof at the Trademark Office.
Rights of the user of a “well-known” mark: see “Well-known” marks in Section 3, Filing, above.
Obligation to use: provided for within a term of five years from the date of publication of the notice of grant. In case of non-use within that period, or if use is suspended for five consecutive years, without justified reasons, the trademark may be cancelled in courts (see also “Lapse” in Section 6, below). Use in Spain is required by law to be effective and real, with the burden of proving use falling on the trademark owner. The following are also considered use: (a) use in a manner differing in elements which do not significantly alter the form in which the mark was registered; (b) use in Spain in relation to products or services intended solely for export; (c) use by a licensee, distributor, etc. with the express consent of the owner. Within the framework of opposition proceedings, following the latest amendments, the Trademark Act recognizes the entitlement of the applicant to require the opponent, who is the proprietor of an earlier trademark on which the opposition is based, to furnish proof that the trademark has been subject to genuine use or that there are proper reasons for non-use. This measure is not yet in force. It will enter into force when the corresponding implementing regulations enter into force.
Marking of goods: not compulsory, but customary, normally using the expression “Marca Registrada” or abbreviations thereof.
Renewals: (a) trademarks regulated under the former Industrial Property Act, which were not renewed while the Trademark Act of 1988 was in force, are granted for twenty years from the date of grant. Application for renewal may be filed up to six months in advance of the expiry date of the registration. If application for renewal is not filed during that period, renewal may still be effected subject to a surcharge of 25% within three months of the expiry date of the registration or a surcharge of 50% within the following three months. The renewal will be granted for a ten-year period; (b) trademarks regulated under the Trademark Acts of 1988 and 2001, are granted for ten years from the filing date. Application for renewal is to be filed and the renewal fee paid up to six months in advance of the expiry date of the registration. If application for renewal is not filed during that period, renewal may still be effected subject to a surcharge of 25% within three months of the expiry date of the registration or a surcharge of 50% within the following three months. A trademark may be renewed for only part of the goods or services for which it was registered. The renewal will have effects from the day following the date of expiration of the previous ten or twenty-year period.
Latest term for renewal: the last day of the legal life of the registration (i.e. upon expiration of ten years from the filing date of the corresponding application or twenty years from the date of grant, depending on whether the registration is regulated under the Trademark Act of 1988 or 2001 or the former Industrial Property Act); nevertheless, there is a grace period of an extra six months, against payment of the corresponding surcharge (see above).
Modification of the mark: not possible after grant; on renewing a mark, it is possible to renounce part of the goods or services for which it was registered.
Changes in the list of goods: during prosecution of a trademark application at the Trademark Office it is possible to restrict the specification of goods or services; it is also possible to restrict the specification on renewing a mark.
Assignment: both trademark applications and registrations can be assigned to another party by the means recognized by law; a mark may be co-owned (“pro indiviso“) by several persons; it is not necessary for a mark to be assigned together with the undertaking; however, transfer of the whole of a business shall include the transfer of its trademarks except where there is agreement to the contrary or the circumstances of the case plainly dictate otherwise. For an assignment to have effects vis-à-vis good-faith third parties it must be submitted in writing and recorded at the Trademark Office. Any one of the following documents may be used: (a) an official certificate of transfer form; (b) an official transfer document form; (c) a public (i.e., notarized and, where appropriate, legalized) deed of assignment; (d) a certified true copy of the public deed of assignment; (e) a copy of the private contract between the parties, duly certified by a Notary Public or other certifying authority; or (f) an extract of the private contract making reference to the assignment, duly certified by a Notary Public or other certifying authority. Documents (a) and (b) above are provided by the Spanish Patent and Trademark Office. Documents (c), (d), (e), and (f) must be legalized by Apostille as per the Hague Convention or up to the Spanish consul and accompanied by an official sworn translation into Spanish. Foreign assignees may have to appoint a Spanish patent and trademark attorney to represent them.
Licenses: both trademark applications and registrations can be licensed for all or part of the goods or services they cover and for all or part of the Spanish territory; licenses may be exclusive or non-exclusive; for a license to have effects vis-à-vis good faith third parties it must be submitted in writing and recorded at the Trademark Office; use of a mark by a licensee is considered as use by the proprietor.
Modification of Protection after Registration
Right of prior user: the Law establishes that rights in a trademark are acquired through registration thereof; on a general basis, only the rights of the user of an earlier mark which is well-known to the interested sectors in Spain within the meaning of Article 6bis of the Paris Convention are recognized; the user of that well-known mark may oppose a later trademark application, or petition the courts to invalidate a mark registered by another party for identical or similar goods which may cause confusion with the well-known mark. In addition, the owner of an unregistered trademark well-known in Spain may prevent use of signs that are confusable with the well-known mark.
Opposition to registered marks: the Law makes provision for opposition during the procedure for registration of a mark, but not after its grant; nevertheless, a party who lodged an opposition can file an administrative appeal with the Trademark Office from the decision of the latter granting a mark; a registered mark can also be challenged by petitioning its invalidity or lapse in the courts in pertinent cases (see headings “Invalidity” and “Lapse” below).
Compulsory licenses: no provision for marks; only applicable to patents and utility models in the corresponding provisions thereon.
Expropriation: as for “patents“.
Invalidity: the Law makes provision for the invalidity of marks applied for in bad faith or granted despite not actually being a sign or means which distinguishes or serves to distinguish goods or services in the market place or despite coming under any of the absolute prohibitions (generic terms, misleading signs, etc.); there is no statute of limitations on the action to petition the courts, which hold jurisdiction, to invalidate a registered mark; provision is also made for the possibility of invalidating marks granted in contravention of relative prohibitions (despite the existence of identical or confusingly similar marks, surnames without authorization, earlier creations protected by a copyright or an industrial property right, etc.); in these cases, unless there was bad faith, the action lapses after five years of acquiescence of use of the later mark by the proprietor of an earlier trademark or right while being aware of said use; invalidity or cancellation may be partial, only for part of the goods or services for which the mark was granted; a declaration of invalidity implies that a mark was never valid and therefore has retroactive effects; on the other hand, cancellation is not a bar to the legal life of a mark until such time as it was cancelled; an action in the courts for invalidity or lapse of a registered mark may be brought by any person who holds a legitimate interest and also by the Trademark Office; apart from the mentioned cases, the Law also makes provision for the possibility of invalidating a registered mark on the grounds of confusing similarity to a mark which is well-known in Spain to the interested sectors, the user of that mark being the party entitled to bring the action; the creator of a mark abroad may also petition the invalidity of the registration obtained in Spain by his commercial agent or representative. In accordance with the latest reform of the Trademark Act, from January 14, 2023 direct jurisdiction to invalidate and revoke trademarks shall lie with the Spanish Patent and Trademark Office, and the civil courts shall have jurisdiction for ruling on such actions in the case of counterclaims in trademark infringement proceedings. Until then the civil courts shall continue to have jurisdiction to rule on trademark invalidation and revocation actions.
Lapse: the Law makes provision for the following cases of lapse of a mark: expiration of its legal lifetime without renewal, non-payment of a quinquennial tax and voluntary cancellation by the proprietor (see “Quinquennial taxes” in Section 5, above); in all these cases the lapse will be declared by the Trademark Office; the lapse will be ordered by the courts, at the request of an interested party, in the following cases: non-use of a mark during five years, unless there are justifying reasons (although the lapse may not be declared if, during the three months prior to the institution of the court action, the proprietor of the mark shows that he has commenced making bona fide use of it); when it has become in trade, as a result of the activity or inactivity of its proprietor, the common name of the product or service in relation to which the mark was registered; when, as a result of the use thereof which may be made by the proprietor or with his consent, on the goods or services for which it is registered, the mark may lead the public to error, particularly as to the nature, quality, characteristics or geographical origin of the goods or services; when, as a result of an assignment of rights the proprietor of the mark no longer meets the conditions established in the Law to be so (for example, a mark granted to a party who can benefit from the Paris Convention and assigned to another party who is not a national of a member country of that Convention). Trademarks that are cancelled shall cease to have legal effect from the time the actions or omissions causing said cancellation took place, irrespective of the date on which notice of the cancellation may have been published in the Official Industrial Property Gazette.
Provision for restoration: the applicant for, or proprietor of a trademark, or any other party to proceedings before the Spanish Patent and Trademark Office who, despite having taken all due care required by the circumstances, has been unable to observe a time limit vis-à-vis the Office shall, upon application, have his rights restored if non-observance has had the direct consequence of causing the loss of any right.
Validation of invalidated marks: no provision.
Registration of invalidated marks: possible if a mark no longer incurs the defect which caused its cancellation; however, it is necessary to file a new application, which will be prosecuted in the usual manner.
Infringement: pursuant to the Revised Criminal Code (Organic Act No. 1/2015) whoever, for industrial or commercial purposes, without the consent of the holder of an intellectual property right registered in accordance with the provisions of trademark legislation, in the knowledge of the existence of that registration, manufactures, produces, imports, offers for sale, distributes, retails, wholesales or stores goods bearing signs identical or confusingly similar to the registered sign commits the criminal offense of infringement. That same offense is likewise committed by whoever reproduces or copies a registered sign for use in the performance of the aforementioned acts. Without prejudice to the provisions of the licensing contract, the licensee may bring proceedings for infringement of a trademark with the consent of the trademark proprietor. In the case of holders of exclusive licenses, they may only bring trademark infringement proceedings if the proprietor, after formal notice, does not bring infringement proceedings himself. In this regard, the corresponding article of the Trademark Act refers to the provisions in the Patent Act concerning actions in defence of patent rights brought by holders of an exclusive license. Any licensee is entitled to intervene in trademark infringement proceedings brought by the proprietor of the trademark, if it is for the purpose of obtaining compensation for damage suffered by the licensee.
Penalties: imprisonment of from six months to two years and a fine of from twelve to twenty-four months. However, in cases of retail sales of falsely branded goods, where economic gains are small, and depending on the offender’s profile and circumstances, the courts may instead impose a penalty of a fine of from three to six months or thirty-one to sixty days of community service, provided that there are no aggravating circumstances (see “patents“). Where the profits from retail sales do not exceed 400 euros, the offense shall be punished as a misdemeanor with the following penalties: home detention of from four to twelve days or a fine of from one to two months. For more serious acts, such as manufacture, wholesale or import: one to four-year terms of imprisonment and a fine of from twelve to twenty-four months. For retailing or using the sign for infringing acts, the penalty is six months to three years. For infringements of lesser importance, such as street or occasional vending, the penalty is six months to two years, although, depending on the offender’s profile and circumstances, the courts may instead impose a penalty of a fine of from one to six months or thirty-one to sixty days of community service, provided that there are no aggravating circumstances (see “patents”). For issues relating to the criminal liability of legal persons, civil liability, and interlocutory relief, as for “patents”.