The Spanish government has implemented a draft plan to amend the two most important industrial property laws: trademarks and patents. The amendments are established to solve a number of issues that industrial property owners in Spain are currently dealing with.
For holders of industrial property rights and experts who specialize in the field of industrial property law, the reform includes several noteworthy new measures.
While the reform affects a variety of areas of industrial law, the goal of this article is to illustrate how the new changes will influence the procedural features of industrial property litigation in Spain.
Trademark Law Amendments in Spain
In provisions of the Trademark Law, the draft law proposes that insolvency judges have the authority to instruct the Spanish Patent and Trademark Office not to expire any insolvent company’s distinctive signs that have not been renewed until the insolvency processes are completed.
In this regard, a current difficulty in Spain is that purchasers of organizations with trademark rights may find that the trademarks, which are one of the insolvent company’s most valuable assets, have expired due to a lack of renewal during the insolvency processes. The reform solves this problem by allowing the insolvency court to order the Trademark Office to keep them from expiring until the insolvency processes are completed, allowing the acquirer to renew them at a future stage.
The draft code stipulates that ordinary courts have the authority to judge the damages that may be claimed as a result of a trademark’s declaration of nullity or cancellation.
The current wording of the Law is uncertain as to whether the Trademark Office has the authority to impose damages on trademark owners who have operated in bad faith when the Trademark Office considers a trademark illegitimate. The reform underlines that persons who have acquired a declaration of invalidity cannot petition the Trademark Office, which is an administrative agency, to assess damages; instead, regular courts should, where appropriate, impose compensation.
Patent Law Amendments in Spain
In terms of the Patent Law, the draft bill proposes that the Spanish Patent and Trademark Office, rather than commercial courts, be responsible for declaring the nullity of supplementary protection certificates for medicines and phytosanitary products when the patent is canceled by an administrative agency.
This indicates that an application to the Patent Office will sufficient to acquire the certificate’s invalidity rather than going via the ordinary courts.
The above-mentioned non-expiry regime for trademarks is likewise extended to patent renewals owing to the holder’s insolvency. This will provide the insolvency judge with more options when it comes to patents owned by the insolvent company, which can be renewed by the insolvent entity’s purchaser even after the expiry period has passed.
The first draft changes the deadline for the defense and counterclaim to 60 calendar days instead of the current two months, making it easier to calculate the time limit if the case is suspended.
When the Spanish or European Patent Office is considering a relevant objection, limitation, or revocation procedure, proceedings in patent invalidity procedures may be delayed due to lis pendens.
This change enables the suspension of existing legal procedures if the existence of a patent opposition mechanism can be demonstrated.
The reform’s objective is to give holders of industrial property rights in Spain more legal certainty, and it directly impacts those who own such rights. For example, the reform includes significant benefits for those purchasing enterprises in financial difficulty in terms of industrial property assets, as well as improvements to the regulation of industrial designs in key sectors. As a result, it is advisable to make preparations for this new future legislation.
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