With the BOE (the Official State Gazette) of December 27, 2018, Royal Decree Law 23/2018 the reform of the current Trademark Law took effect on January 14, 2019, except in some sections that have a specific term of application.
In order to allow a correct functioning of the internal market in the European Union, the reform adapts further Spanish legislation to the EU-Directive 2015/2436 of the European Parliament and of the Council, of 16 December 2015.
The main relevant amendments of the trademark law reform are the following:
Proof of use requeste
One of the main points of the law, is the proof of use: An opponent who tries to prevent the registration of a new trademark can now be asked for a proof of use of his own trademark, (under the understanding that his trademark has been registered for at least five years).
Graphic representation not necessary anymore
The graphic representation in trademark applications is eliminated. This will allow to enlarge the catalogue of signs that can be protected as trademarks such as holograms, movement marks or multimedia. This also facilitates the access of non-traditional brands, like olfactory, gustatory or tactile brands, (smell, taste or, touch ) to the Registry.
Well-known versus renowned
The previous law divided between well-known trademarks (those known within a specific sector) and renowned trademarks (those known to the general public). The new law now only recognizes renowned trademarks, however, including also trade names into this protection.
Under the new regulations, owners of a trademark can prevent, the commercialization of goods with identical or similar trademarks, not being necessary to proof they have been released into the market.
More protection for appellations of origin:
The protection of appellations of origin is strengthened: In particular, the prohibitions of registrations which refer to the protection of Denominations of Origin (DO) and Protected Geographical Indications (IGP) are systematized and reordered.
The procedures of expiration and invalidation of trademarks will be the competence of the SPTO (Spanish Patent and Trademark Office).
The new Trademark Law will benefit companies and individuals, facilitating the coexistence of national brands with European Union trademarks.