Invalidity and revocation actions before the SPTO

Invalidity and revocation actions before the SPTO

One year later

It has been a year (and a little more) since trademark invalidity and revocation proceedings became the competence of the Spanish Patent and Trademark Office (SPTO), in accordance with Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 on the approximation of the laws of the Member States relating to trade marks, which undoubtedly posed a challenge for both the Office and users.

According to the SPTO sources, a total of 464 applications were received in this first year, of which 253 were for invalidity actions and 211 for revocation actions. More specifically, regarding invalidity proceedings, 105 files have been resolved and more than 50% of them have been totally or partially upheld. With regard to revocations, 131 cases were resolved, of which 95 were fully upheld and 9 were partially upheld.

Our assessment of the first year is positive, as this change has encouraged many holders to bring actions before the Office as these were previously lengthy and costly procedures before the courts. However, there has not been the avalanche of proceedings that was predicted.

In any case, although we already have a large number of decisions, in order to have a complete picture of the system and its performance and then be able to make a thorough assessment of the pros and cons, we believe that we should allow a little more time.

There is no doubt that this change helps users and eases the burden on the courts, and we could not think of a better institution than the SPTO to examine this type of proceedings, since, after all, it is still the specialised body in the field of trademarks, designs, and patents.

Author: Isabela Robledo McClymont

Photo by Wesley Tingey on