Organic Law 7/2022, amending Organic Law 6/1985, of 1 July 1985, on the Judiciary (LOPJ), on the subject of Commercial Courts, contains important new developments in the organisation of the jurisdiction, in particular attributing jurisdiction in certain matters between civil and commercial courts, Provincial Courts and specialised sections of the same. Our attention is focused on industrial property matters.

The most important change introduced by LO 7/2022 in the field of industrial property is the attribution of jurisdiction to the Provincial Courts for “appeals against those decisions that exhaust the administrative channels issued in industrial property matters by the Spanish Patent and Trademark Office” (modification of section 2, Article 82 of Organic Law 6/1985, of 1 July 1985, of the Judiciary, hereinafter LOPJ), so that the SPTO’s administrative acts will not be subject to appeal before the contentious-administrative jurisdictional order, but rather before the specialised civil order. This concerns all administrative decisions of the Office, in any of the industrial property modalities. In this reform of the LOPJ, the principle of legal certainty has prevailed, since industrial property was examined by two different jurisdictions (contentious-administrative and specialised civil). The MS of LO 7/2022 justifies the attribution of jurisdiction to the specialised Sections of the Provincial Courts, both “on the basis of their high degree of experience in industrial property matters and on the convenience of avoiding different jurisprudential criteria in this area. However, the entry into force of this modification of the jurisdictional order is deferred until 14 January 2023 (Final Provision 5 LO 7/2022).

Among the decisions of the SPTO that may be challenged before the specialised civil courts are those that in the future may arise as a result of the new powers of the Office in requests for invalidity and revocation of trademarks by virtue of the provisions of Article 58 of Law 17/2001, of 7 December, on Trademarks (wording given by Royal Decree-Law 23/2018, of 21 December), which provides that the request for invalidity and revocation of the trademark is made before the Spanish Patent and Trademark Office. And in accordance with Article 61 of the same Law (wording given by the aforementioned Decree-Law) “the courts shall reject any counterclaim for invalidity or revocation if the Spanish Patent and Trademark Office has already ruled previously, by means of a final decision, on an application with the same object and the same cause of action, between the same parties”, which is a consequence of the finality of the administrative decision. This is without prejudice to the fact that the judges may hear the invalidity or revocation of a trademark that is raised as a counterclaim in trademark infringement proceedings. The amended Trademark Act transposes 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 trade marks, Article 45 of which provides that “without prejudice to the right of the parties to appeal before the courts, Member States shall provide for an efficient and expeditious administrative procedure for applying to offices for a declaration of revocation or invalidity of a trade mark”.

Going further into the specialisation of the courts, the LO 7/2022) introduces a new Article 82 bus in the LOPJ by means of which the General Council of the Judiciary may agree that one or more sections of the same Provincial Court may hear appeals filed, among others, against those decisions that exhaust administrative channels issued in industrial property matters by the SPTO, with the agreement necessarily having to be adopted when the number of Commercial Courts in the province is greater than five.

            The exclusive jurisdiction of the Section or Sections of the Provincial Court of Alicante specialising in commercial matters, as well as the Commercial Courts based in the city of Alicante in EU trade mark and Community design cases has not been substantially modified, but merely adapted to the Regulations in force (Articles 82.3 and 86 quinquies LOPJ).

Finally, LO 7/2022 also amends the Civil Procedure Act (LEC) by introducing two types of novelties. The first is the regulation of territorial jurisdiction and the second is procedural.  With regard to territorial jurisdiction, Article 52.1 of the LEC is amended to add a new paragraph 13. bis, which establishes that the sections specialising in commercial matters of the Provincial Court in whose district the seat of the High Court of Justice of the Autonomous Community of the plaintiff’s domicile or, failing that, of the domicile of the representative authorised in Spain to act on their behalf is located shall have jurisdiction in appeals against decisions that exhaust administrative channels issued in industrial property matters by the SPTO, provided that the General Council of the Judiciary has agreed to assign exclusively to the Commercial Courts of that locality the hearing of industrial property matters. The specialised sections of the Provincial Court in whose district the SPTO’s headquarters are located shall also have jurisdiction, at the plaintiff’s choice.

In terms of procedures and standing, a new paragraph 3 is added to Article 250 LEC, stipulating that appeals against decisions that exhaust administrative remedies issued in industrial property matters by the SPTO will be decided in oral proceedings with the specialities established in Article 447 bis of the LEC itself. This article is new in the LEC and regulates the standing to bring an action challenging the SPTO’s decision, the time limit, its processing and summons of the SPTO and what the plaintiff can request from the Court.