As of January 14, 2023, actions for revocation and invalidity of Spanish trademarks can be filed through administrative proceedings before the Spanish Patent and Trademark Office (“SPTO”). This is expected to make cancelling a trademark, quicker, cheaper, and more flexible than through Court proceedings. This is likely to be most relevant for non-use cancellation actions but applies to all grounds for absence or loss of registrability (including based on bad faith, prior rights, lack of distinctiveness).
The path to the courts, however, remains open. Cancellation applicants therefore now have a choice which they want to use wisely. In many cases, the new administrative proceedings will be advisable, even beyond the (very important) advantages of greater speed and lower cost (which are, by themselves, strong enough arguments). An important reason to avoid filing a complaint before the civil courts is the hassle of having to give notice abroad. This is especially complicated before the civil courts when the defendant is from outside the EU. As non-EU applicants need an IP agent to act before the SPTO, cancellation actions filed with the SPTO can be notified directly to the representative of record in Spain, saving time and money on translations and letters rogatory. Read more