Preliminary Draft Bill amending the Trade Mark Act 17/2001 of December 7, 2001

The new draft bill aims to amend the three main intellectual property Acts in Spain:

1. Trade Mark Act 17/2001 of December 7, 2001;

2. Legal Protection of Industrial Design Act 20/2003 of July 7, 2003; and

3. Patents Act 24/2015 of July 24, 2015.

The proposed amendments to trade mark law will be the focus of this article.

The Trade Mark Act 17/2001 was recently amended in order to transpose Directive (EU) 2015/2436, which introduced important and profound changes to trade mark regulations.  Now certain adjustments to the Trade Mark Act are underway in order to provide it with greater coherence and precision.

The most significant new features of the draft bill are:

• In terms of procedure for publication of an application, the need to include the applicant’s address is no longer required –it is sufficient to provide the applicant’s e-mail address instead.
• A judge in charge of bankruptcy proceedings may order the Spanish Patent and Trade Mark Office not to lapse trade marks that have not been renewed, until the end of the bankruptcy proceedings.
• In cases of possible compensation for damages in nullity or revocation proceedings, when the owner of the trade mark has acted in bad faith, these damages must be substantiated in competent courts (i.e. not by the Spanish Patent and Trade Mark Office).
• The articles referring to grounds of refusal for collective and certification trade marks will be applicable to international trade marks as well.
• For the conversion of European Union trade marks, an amendment is introduced that seeks to bring their requirements up to speed with those of national trade mark or trade name applications.
• In relation to the regulation of trade names, there is no need for graphic representation and the classification of their scope is adapted to the provisions of the Nice International Classification of Goods and Services.
• The new procedure, brought about by reform in 2018, is being introduced, in addition to a legal power of the Minister of Industry, Trade and Tourism to modify the maximum terms of resolution related to distinctive sign procedures, upon proposal by the Spanish Patent and Trade Mark Office.
• Finally, following procedural changes introduced in the 2018 reform, the amount of the opposition fee is updated to reflect the service now provided.

This draft bill is now subject to review and the deadline for submitting views has just passed.