Clifford Chance

The direct administrative competence of the Spanish Patent and Trademark Office ("SPTO") to process proceedings relating to the invalidity and revocation of registered trademarks and trade names is set to enter into force on 14 January 2023. This direct competence will replace direct invalidity and revocation actions, which are currently brought before the civil courts.

With this entry into force, and in accordance with Spanish Trademark Act 17/2001, the invalidity and the revocation of a registered trademark or trade name may only be declared (i) by means of a direct application filed with the SPTO or (ii) by means of a counterclaim in a trademark infringement action before a civil court.

In order to provide more information on this new competence, on 12 December 2022 the SPTO published an information handbook on the new administrative invalidity and revocation proceedings for distinctive signs (only available in Spanish). As the SPTO announced on its website, the purpose of the handbook is to help stakeholders understand the ins and outs of these proceedings, as well as to serve as a guide on the formalities necessary to bring them and to act as a party in them.

With this new competence, the SPTO is in line with the European Union Intellectual Property Office ("EUIPO") in terms of trademark invalidity and revocation proceedings.