Since January 14 2023, the Spanish Patent and Trademark Office (SPTO) has been the competent administrative body to hear applications for nullity and cancellation of trademarks, without prejudice to the fact that its decisions may be reviewed by the civil courts (Commercial Courts and higher courts). The attribution of jurisdiction therefore extends to trade marks and trade names.

Invalidity can be based either on the grounds that the distinctive sign is subject to an absolute legal prohibition of registration, where an applicant for registration has acted in bad faith at the time of application, or on the grounds that it is subject to a relative prohibition of registration.  Cancellations may be based on the lack of use of the distinctive sign during the period provided for in the Trademark Act; on the fact that, due to the activity or non-activity of the owner of the sign, it has become the usual designation of a product or service; and in cases in which the distinctive sign may mislead the public due to the use that has been made of it.

The invalidity proceedings are initiated at the request of the persons who, in accordance with the provisions of the Trademark Act, are entitled to do so, being, as is well known, broader in the case of invalidity proceedings for absolute prohibition than when a relative prohibition is invoked. In cancellation proceedings, any person has standing, provided that they consider themselves to be harmed.

The interested party’s application must meet the requirements set out in the Treademark Act and its Regulation, which will be examined by the SPTO, which must decide whether it is admissible or inadmissible. In the latter case, there will be no decision on the merits of the application, but only on the lack of the requirements for processing the file. There will be a decision on nullity or cancellation.

When the application has been admitted (including the case in which the interested party has remedied the defects that led to the initial rejection), the SPTO will grant the holder of the challenged sign a period of two months in which to reply and make such observations as it deems appropriate. If the invalidity is based on an earlier registration, the holder of the challenged sign may request proof of use of the sign, as well as renounce all or some of the goods or services for which the sign is registered.

During the procedure, the SPTO may request the parties to the procedure to respond to evidence or statements made by the other party; such requests must be answered within the period granted, which may not be less than ten days or more than one month.

The administrative procedure ends with a decision on the application for invalidity or cancellation, which may be appealed to the Director of the SPTO within one month of the day following its publication in the Official Gazette of the Spanish Patent and Trademark Office (BOPI).

Finally, it should be noted that the maximum time limit for proceedings is 24 months for invalidity proceedings and 20 months for cancellation proceedings. Once these periods have elapsed, counting from the date of the application for invalidity or cancellation without the SPTO having issued a decision, the application will be considered rejected by administrative silence.

Cristina Hernandez-marti Perez

Hernandez Marti Abogados, Spain