On December 27, 2018, the following was published in the Official State Gazette (BOE): Royal Decree-Law 23/2018, of December 21, transposing directives on trademarks, rail transport, and package travel and linked travel arrangements.
This Royal Decree-Law amends, among other regulations, the Law 17/2001, on Trademarks, transposing the Directive 2015/2436, on the approximation of the laws of the Member States relating to trademarks.
The new regulation, which will mostly come into force on January 14, brings relatively significant changes and, to a certain extent, brings the functioning of our national trademark system closer to that of European trademarks, governed by the Regulation 2017/1001 (which we discussed, at the time, in this post).
In today's article, we explain some of the main changes brought about by the new regulation:
1) The requirement for graphic representation is eliminated. of the trademark, imposed until now by Article 4 of our law. As of January 14, trademarks may be registered with the OEPM that are not necessarily represented graphically, but are represented in such a way that “it allows the competent authorities and the general public to determine the clear and precise object of the protection granted to its owner.”.
Does this open the door to less conventional or stranger brands than those that have been registered so far (for example, olfactory brands)? The answer, disappointing as it may be, is no (for now).. As we explained in this post, in which we talk about the possibility of Hasbro trademarking the smell of Play-Doh, the well-known judgment of the Court of Justice of the European Union of December 12, 2002, in the famous case “Sieckmann” requires that the representation of the mark be “precise, complete in itself, easily accessible, intelligible, durable, and objective.” These requirements are not met if a sample of the scent is provided in a container, a formula of the chemical substance, or a description of the scent.
The new regulation may, however, facilitate the registration process for sound marks, as the applicant will no longer be required to provide a musical score or other graphic representation of the sound they wish to register, but may instead provide a simple audio in a digital file. We have already discussed European sound marks filed with the EUIPO in this other post.
2) The well-known trademark is eliminated, and only the renamed one remains.. Under the unamended regulations, a well-known trademark was one known to the sector of the public to which the goods and services are directed. A renowned trademark, on the other hand, is one known to the general public.
Two issues stand out in the removal of the well-known trademark: one, that the renamed brand is not defined now (this definition has been removed from Article 8), leaving it as an indeterminate legal concept; and secondly, that it does not appear that the concept of a renowned brand will now allow for gradations (i.e., greater or lesser renown), as the second part of Article 8.2, which established (in wonderful wording) that protection would extend “to products, services, or activities of a nature that is all the more different the greater the degree of recognition of the trademark,” has also been eliminated.
3) In the opposition proceedings before the SPTO, the applicant may request the owner of the opposing trademark to test the effective use of your brand, if it is registered more than 5 years. This makes the opposition procedure before the OEPM similar to the procedures before the EUIPO. However, this amendment will not come into force until the new procedural changes have been developed in regulations, which has not yet happened.
4) Some absolute prohibitions on registration are amended. The new wording prohibits trademarks that conflict with designations of origin and geographical indications (Article 5.1 h)); traditional wine terms (Article 5.1 i)); traditional specialties guaranteed (Article 5.1 j)); or plant varieties (Article 5.1 k)).
Likewise, the new regulation brings with it the granting the OEPM the power to hear and decide on proceedings for revocation due to non-use and invalidity of registered trademarks, although this amendment will not enter into force until January 14, 2023. This power will be (almost) exclusive to the OEPM, except in cases of counterclaims in trademark infringement proceedings, a power that, unsurprisingly, remains with the competent courts and tribunals.
At Bamboo, we are lawyers specializing in trademarks, so if you have any questions about the above, please feel free to contact us. We will be happy to help you.
