The reform of Trademark Law will enter into force on 14 of January 2019

Posted on 26/12/2018 by balder


The Spanish regulations on trademarks must be adapted to the EU Directive 2015/2436 of 16 December 2015 of the European Parliament and of the Council.

With this purpose, the reform of Trademark Law 17/2001, of 7 December 2001, will be approved, foreseeably by Decree-Law.

Among the most important changes, which are scheduled to come into force on 14 January 2019, the following stand out:

  • The concept of legitimacy is broadened by recognizing the capacity of any natural or legal person.

  • The requirement of the sign being represented graphically is deleted.

  • The notorious/well-known trademark duality disappears.

  • A new prohibition is introduced on signs consisting of or reproducing the name of a plant variety.

  • Regulation of absolute grounds of refusal on designations and indications of origin, traditional wine names and traditional specialities guaranteed, with express reference to Union Law and National Law.

  • In opposition proceedings, under the applicant’s request, proof of use of the earlier mark may be claimed if five years have elapsed since its registration.

It is expected that on 14 January 2023, two new measures will enter into force with which the adaptation of our regulations to the aforementioned Directive will be definitively completed: the assumption by the Spanish Patent and Trademark Office of competence in invalidity and cancellation proceedings, which until now were exclusive competence of the Courts of Justice.