Publication of the Royal Decree 306/2019 which modifies the Enforcement Regulation of the Law on Trademarks

Main novelties

The Royal Decree 306/2019, of April 26th, which modifies the Enforcement Regulation of the Law 17/2001, of December 7th, on Trademarks (approved by the Royal Decree 687/2002, of July 12th) was published on April 30th 2019 at the Spanish Official State Gazette num.103. This reform was necessary after the transposition of the Directive 2015/2436 to the Spanish Legal System by means of the Royal Decree-law 23/2018, of December 21st, which had modified the Law on Trademarks and whose main novelties were analysed on the January number of our Bulletin.

Among the most relevant changes stipulated by the Royal Decree 306/2019, we would like to highlight the definition of new types of Trademarks, as a result of eliminating the requirement of the sign graphical representation. In order to adapt to new technologies, Trademarks can be now represented not just by graphical means, but also by audio (mp3) and video files (mp4) if and when the aim of protection can be defined clearly and precisely. The Royal Decree expressly allows the registration of motion, multimedia, holograms or sound Trademarks, among others.

Moreover, the RD regulates the time limits and procedures that should be met to perform the proof of use of the opposing Trademark, that can be required by the applicant in the context of an opposition processing. In this regard, we should mention that the proof of use will only be applicable to those Trademarks and Commercial Names submitted after the entry into force of this Regulation (on May 1st 2019).

Finally, the Regulation tackled in a new title IX the administrative procedures of Trademarks invalidity and expiry. The direct power in this field was conferred to the Spanish Patent and Trademark Office (SPTO) by the recent reform of the Law on Trademarks which will come into force on January 14th 2023.