Royal Decree-Law on Trademarks, already in force

Spanish Transposition of the Directive (EU) 2015/2436

In response to markets evolution, both the European Union and its Member States are making progress in Trademarks regulation. In this sense, at Spanish level the Royal Decree-Law 23/2018, of 21 December 2018, on transposition of the Directive (EU) 2015/2436, of the European Parliament and of the Council, of 16 December 2015, to approximate the laws of the Member States relating to Trademarks was recently approved. Many regulations now imposed by the new Directive had been previously adopted by the Spanish legislation through the Law 17/2001, of 7 December, on Trademarks. Nevertheless, there are certain aspects in which this Directive has modified this Spanish law. The entry into force of this new version of the Law 17/2001 took place past January 14th 2019, the ending date fixed by the European Union for the national transposition.

Regarding the most remarkable novelties introduced by the Royal Decree-Law, the following ones may be highlighted:

• Legitimization for applying the registration: A Trademark or Commercial Name can be applied by any physical or juridical person, independent of its nationality or its established place of business or residence.
• Distinctive sign representation: The previous regulations required that applied distinctive signs had to be able to be graphically represented. With the aim of getting adapted to the present and future technological evolution, the new Royal Decree-Law just requires that applied signs have to be able to be represented at the Trademarks Registry without specifying the way, but demanding its clear, precise, self-sufficient, easily accessible, comprehensive, long-lasting and objective representation. For more information on this point, the following documents can be consulted:
  - Resolution of 9 January of the SPTO Director
  - Common Communication on the representation of new type of trade marks (Europeantmdn)
• New absolute grounds phrasing (detailed at the article 5 of the Law 17/2001 on Trademarks):
  - The ban of the point e reaches more sings with its new phrasing ‘The following shall not be registered … signs which consist exclusively of the shape, or another characteristic, which results from the nature the goods themselves; the shape, or another characteristic, of goods which is necessary to obtain a technical result; the shape, or another characteristic, which gives substantial value to the goods’.
  - Bans related to designations of origin and geographical indications, traditional terms for wine, traditional specialities guaranteed and plant varieties are systematized by referring directly to the Union legislation or the national law of the Member State concerned in order to avoid wrong interpretations.
• Well-known Trademarks: The distinction between notorious and well-known Trademarks or Commercial Names disappears, being just foreseen the category well-known in Spain for Spanish Trademarks or well-known in the European Union for European Union Trademarks.
• Regulation of the invalidity or expiry grounds: The direct power for the declaration is given to the Spanish Patent and Trademark Office. However, it is possible to apply an aspiration of invalidity or expiry judicially through a counterclaim in the context of an action for the infringement of a Trademark.
• Proof of genuine use in the context of the opposition to the registration: This point will only be applicable to those registrations that were applied after the entry into force of the regulation that develops the processing of the proof of use.

The procedure of Trademark and Commercial Name applications have been recently modified in order to adjust it to these regulatory modifications having effects both in the electronic application and in the printed form. So as to distinguish the applications made in the context of the new legislation a new numbering has begun starting at the number 4000000 for Trademarks and 400000 for Commercial Names.