This article is part of a series on trademarks in Spain.(1)
A trademark may be removed from the register by the Spanish Patent and Trademark Office (SPTO) or the commercial courts.
A trademark may be cancelled by the SPTO if it is not duly renewed (renewals must be made every 10 years) or if it is surrendered by the owner (the owner may surrender the trademark for all or some of the goods or services for which it is registered; surrender will not be permitted where this may affect the rights of third parties – eg, where the rights are subject to licences, attachments or call options).
The Commercial Courts of Barcelona, Madrid, Valencia, Granada, Las Palmas, A Coruña and Bilbao are the specialised IP courts in the civil jurisdiction and can invalidate or cancel a Spanish trademark. As of 14 January 2023, the invalidation and cancellation of a trademark may be sought before the SPTO or the commercial courts only through a counterclaim in a civil infringement action.
A trademark will be cancelled by a commercial court if:
- it has not been put to genuine and effective use in the Spanish market in connection with the goods or services for which it is registered – if such use is not made from the date that the registration is final or ceases for an uninterrupted five-year period without legitimate reason, the trademark may be cancelled if a revocation application is filed before the commercial courts;
- the trademark has become a common name for the goods or services for which it is registered as a result of the owner's activity or inactivity; or
- the trademark becomes misleading as a consequence of its use in the market.
Commercial courts can also invalidate a registration on absolute and relative grounds where the registration has been obtained unlawfully.
An invalidation action based on absolute grounds will not be time barred. However, regarding the relative grounds, if the owner of the earlier right has tolerated the use of the infringing mark for a period of five successive years, the right to bring an invalidation action will lapse, unless the infringing mark was registered in bad faith.
An owner of prior rights that wishes to act against a registration filed in good faith has five years from the date of publication of the notice of registration or the date on which the owner of prior rights becomes aware of the later trademark being used in Spain.
There is no time limit for action by an owner of prior rights against a registration filed in bad faith.
The SPTO can perform official searches. These include searches for identical and similar word marks and trade name searches (official searches for traditional graphic marks and non-traditional graphic marks are not available).
For further information on this topic please contact Sonia Santos or Jesús Arribas at Grau & Angulo by telephone (+34 93 202 34 56) or email ([email protected] or [email protected]). The Grau & Angulo website can be accessed at www.ga-ip.com.
(1) For earlier articles in the series, please see:
- "Trademarks in Spain: legal framework";
- "Trademarks in Spain: ownership and protection"; and
- "Trademarks in Spain: procedures, examination and opposition".
This article first appeared in World Trademark Review Yearbook: A global guide for practitioners 2021/2022, a supplement to World Trademark Review, published by Law Business Research - IP Division. To view the guide in full, click here.