Future Amendment of the Spanish Trademarks Act: Registration of "Non-traditional" Trademarks

Tuesday, 9 of May of 2017

The draft bill partially amending the Spanish Trademarks Act 17/2001 (in Spanish) has recently been published, incorporating Directive 2015/2436 on the approximation of the laws of the Member States relating to trade marks.

This amendment aims to increase the protection offered by trademarks, adapting to current trends and harmonizing the system of the different member states.

It will be necessary to wait until 14 January 2019 for the entry into force in Spain of this amendment (14 January 2023 for those aspects concerns to the competence of the SPTO to directly declares the invalidity or expiration of trademarks), which intends to overcome the negative effects of the difference between the systems of trademarks which coexist in the European Union, so that trademarks can benefit of the same protection in all the Member States.

There are many amendments that are introduced in the draft bill. In this post, we want to focus on the amendment of Article 4 of the Trademark Act 17/2001 concerning the "Concept of a Trademark". Although this concept, in its strict sense, is unchanged, there is a significant change in practice due to the elimination of the graphic representation of the trademark requirement.

Thus, the current Spanish Trademark Law requires the trademark to be represented graphically, while the new legislation, introducing the provisions of the Directive, will allow access of any sign capable of being represented, without specifying the manner used, which will allow the use of all available technology at any time.

It will be sufficient if such representation enables the competent authorities and the public to determine the matter of the protection. The representation of the trademark, following the criteria established by the Court of Justice in the Judgment of 12 December 2002, C-273/00, "Sieckmann", must be clear, precise, self-contained, easily accessible, intelligible, durable and objective.

The traditional concept of trademark, through its graphic representation with words and/or images, has become obsolete with the development of new advertising techniques, increasing the competitiveness of companies, and the need for innovation.

At the present time, the use of so-called "non-traditional" trademarks such as color per se, certain sounds or smells or multimedia marks is becoming more frequent, in order to attract the attention of the public, which implies the need for a legislative amendment in order to allow those types of marks to be registered.

It will be necessary to wait until the regulation of this legislative reform to know in practice which technical means are articulated in the Spanish Patent and Trademark Office (SPTO) for the implementing of this aspect of the Law, (audio files, video files, etc.) and, essentially, to the interpretation of that new provisions by the Office, in particular in combination with the requirement that the sign be distinctive in order to constitute a trademark.

The SPTO has a long period to articulate the technical and human means necessary for a correct implementation of this amendment, which we hope will improve the trademark system and it will lead to the start of the protection in Spain of the so-called "non-traditional" trademarks