Since January 14, the Spanish Patents and Trademarks Office (SPTO) has been responsible for hearing applications for invalidity and revocation of trademarks. We take a look at the biggest risk faced by applicants seeking invalidity of a trademark on relative grounds.

The SPTO has the power to declare the signs invalid where it considers that they come under an absolute prohibition or a relative prohibition. The main difference is that, in the first case, applicants do not need to be the holder of a prior right to the mark they are seeking to have declared invalid, since invalidity may be declared in relation to marks that are not distinctive, that are descriptive, unlawful, contrary to public policy or to accepted principles of morality, that are generic, liable to mislead the public or registered in bad faith, as provided for in article 51 of the Trademark Law.

In contrast, where an application for invalidity is made on grounds of relative prohibitions, based on article 52 of the Trademark Law, it must be evidenced that the registered sign is, for example, identical or similar to a prior or well-known trademark or trade name, or to an unregistered trademark that was well known in Spain prior to the filing date of the contested trademark.

Pursuant to article 58 et seq. of the implementing regulations of the Trademark Law, applications for invalidity must include the following:

  1. The particulars of the applicant and of its representative if the application is filed through the representative.
  2. The number of the mark for which invalidity is sought (contested registration) and the name of its owner.
  3. The grounds on which the invalidity application is based.
  4. An indication of the products or services with respect to which invalidity is sought. If no indication is made, it will be understood that invalidity is sought with respect to all products and services covered by the contested mark.
  5. Identification of the prior right or rights on which the invalidity application is based, as well as the reasons, motives and grounds on which the application is based and any evidence deemed pertinent. Evidence should be provided in the form of schedules that must be numbered sequentially and accompanied by an index containing a brief description of the document, an indication of the specific parts of the document used to support the claim and the page number of the claim in which the document in question is mentioned.
  6. Proof of payment of the established fee.
  7. The signature of the interested party or their representative. Where the invalidity application is filed by a licensee or person authorized to exercise a prior right, evidence of the authority or right authorizing them to file the application.

Accordingly, the invalidity application filed with the SPTO must indicate the prior right of the applicant, on the basis of which the invalidity of the later mark is sought. What is the risk? That the owner of the contested mark may require the applicant to evidence use of the earlier mark. Let’s look at a basic outline:

 

The procedure would be akin to filing a counterclaim in the civil jurisdiction, since the owner of the mark for which invalidity is sought (who we could call the “defendant”) counterattacks by demanding proof of use of the mark on which the applicant (“claimant”) has based its claim for invalidity of the defendant’s mark.

In this case, the claimant would have to provide proof of use of their mark in two different periods:

  1. In the five years prior to the filing of the invalidity application.
  2. In the five years prior to the date of application for registration or the priority date of the registration for which invalidity is sought.

This can involve the assessment having to go back many years, so organizing the proof of use is paramount. It is crucial to note that if evidence of use of the claimant’s prior mark cannot be provided, the SPTO will dismiss the invalidity application where it is based on such prior mark. For these purposes, the SPTO has provided a number of forms and published a Handbook on administrative invalidity and revocation.

If the SPTO’s decision is unfavorable, an administrative appeal may first be filed at the trademark office itself, in line with past practice. However, where the decision in the administrative appeal is also appealed, it may be heard, as applicable, by the specialized panels of the provincial appellate courts of Madrid, Barcelona, Valencia, Granada, La Coruña, Bilbao and Las Palmas de Gran Canaria.

The features of this new appeal are set out in the Civil Procedure Law (article 447 bis) and apply to any decisions that exhaust the administrative remedies established by the SPTO in relation to industrial property.

In conclusion, our recommendation is very simple: make sure you can prove that the prior mark cited to seek invalidity of a later mark was used in the two periods indicated. Otherwise, it will be necessary to either find another ground for invalidity or think twice about challenging the third-party mark.

 

Isabel Pascual de Quinto Santos-Suárez

Garrigues IP Department