On December 23 2015, the Official Journal of the European Union published the Directive (EU) 2015/2436 of the European Parliament and of the Council. The aim of this Directive is to reach a further harmonisation of provisions of substantive and procedural laws relating to the trade mark systems at national and EU level.
The new EU Trade Mark Regulation adopted by the European Union Intellectual Property Office applies from March 23 2016.
Member states are bound to adapt their national laws to transpose this new Directive by January 14 2019, except for Article 45, concerning the procedure for revocation or declaration of invalidity, which will enter into force from January 15 2023.
As regards those amendments that represent substantive changes, as compared with the current Spanish regulations, three of them deserve special attention.
The first one concerns the new concept of a trade mark, where the requirement of graphic representation disappears. The requirement the new definition embraces is that signs must be represented in a manner that allows the competent authorities and the public to determine, clearly and precisely, the subject matter of the protection. Therefore, it will be required to provide for new appropriate ways of representation.
The second change has to do with the opposition procedure. Spanish trade mark law already provides for an administrative opposition procedure. Thus, the challenge lies in putting into practice a system embracing non-use of the prior sign as a defence.
Therefore, at the request of the applicant, the opposing party will have to demonstrate that the prior sign has been in use, within a five-year period preceding the filing date or priority date of the later trade mark. If the opponent fails to provide evidence of use, the opposition will be rejected, unless there are proper reasons for non-use.
The third amendment refers to providing for an administrative procedure for revocation or declaration of invalidity of a trade mark. At present, parties are compelled to appeal to the courts.
These reforms lead to the following conclusions.
First, the new concept of trade mark will facilitate the registration of non-traditional signs. Second, proving the genuine use of a prior sign will be inevitably to exercise the rights arising from its registration, as oppose to the present Spanish regulation. Finally, administrative procedures for revocation or declaration of invalidity will involve a significant change in the Spanish trade mark system to invalidate a trade mark where there is some ground for refusal.
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Carmen Urrea |
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