1. Current situation
1.a) Under the Spanish Trademark Law, the OEPM is empowered to resolve the granting of and opposition to trademarks as well as administrative appeals against them, by issuing decisions that can be reviewed by the judicial review courts.
The current legislation assigns jurisdiction to hear trademark invalidity and revocation actions to the civil courts, which are currently few and highly specialist in Spain. Thus, 20 Commercial Courts are currently competent in this area at first instance and 7 Provincial Appeal Courts have jurisdiction on appeal. The latter are based in Madrid, Barcelona, Valencia, Bilbao, Granada, A Coruña and Las Palmas de Gran Canaria.
To this end, several changes have been made to the Spanish judicial system to ensure that proceedings concerning intellectual property and related rights become more specialist, efficient and standardised.
1.b) Currently, trademark invalidity and revocation actions can be raised directly by the claimant by means of a claim; or indirectly by the defendant by means of a counterclaim or a motion.
2. New system of 14 January 2023: the OEPM will now have competence to hear trademark invalidity and revocation actions, replacing the civil courts which will deal with the respective appeals
In any case, the possibility of the trademark invalidity and revocation proceedings being raised by way of counterclaim before the civil courts in the context of trademark infringement proceedings is maintained.
The regulations to be interpreted and applied by the OEPM cover the usual matters within its sphere of action – such as registration, distinctive character, use, prestige and reputation of trademarks – but also other civil and procedural matters that have traditionally been interpreted and applied only by the courts.
Obviously, the OEPM will apply and interpret these issues in the light of the relevant case law, depending on the facts in each case; moreover, it will take into account the doctrine of the EUIPO.
The scope of the evidence that the OEPM will take into account will be broad, being essentially of a documentary nature. Such evidence may include commercial reports, market analyses, affidavits and the like, as well as possible statements by parties, witnesses and experts.
The new system provides for more flexible time limits for submitting pleadings and evidence, leaving the possibility of successive replies and rejoinders to the discretion of the OEPM, depending on the complexity of the issues and the evidence.
In any case, from 14 January 2023 the Provincial Civil Courts will be responsible for reviewing the decisions issued by the OEPM in this area.
The current jurisdictional framework is the result of reforms of the Organic Law on the Judiciary, as well as of the Spanish Civil Procedure Law, where notably a new paragraph 13a with the following wording has been inserted into Article 52.1:
“13. In industrial property matters, the court specified in the special legislation on such matters will have jurisdiction.
13.a. In appeals against decisions by the Spanish Patent and Trademark Office that bring administrative proceedings concerning intellectual property matters to an end, the sections specialising in commercial matters of the Provincial Appeal Court whose judicial district covers an area which includes the city which houses the Court of Appeal (Tribunal Superior de Justicia) for the Autonomous Region where the applicant has his/her domicile or, failing that, where the address of the representative authorised in Spain to act on his/her behalf is located will have jurisdiction, provided that the General Judiciary Council has agreed to assign exclusively to the Commercial Courts of that locality the hearing of intellectual property matters. The specialist sections of the Provincial Appeal Court in whose district the headquarters of the Spanish Patent and Trademark Office is located will also have jurisdiction, at the claimant’s choice.
One of the consequences foreseen of the new legislation is its possible “pull effect”, with more litigation being drawn to the Madrid courts.
3. Conclusions and possible advantages of the new system
In conclusion, the new system may prove faster and cheaper.
In the first instance, the OEPM can help overcome court congestion. Over the last two years, the OEPM has been equipping itself with the human resources and IT resources required for such a significant workload.
We trust that the OEPM’s lack of inexperience in this area will be counterbalanced by the expertise of the specialist civil courts which, from 2023, will review the lawfulness of its decisions, something which should also help create a uniform body of case law. A good example in this regard is the Madrid Provincial Appeal Court, whose 28th Section has had specialist jurisdiction in this field since 2006 and which from 1 April 2023 will be reinforced by a newly created 32nd Section, with exclusive jurisdiction for intellectual property, copyright, unfair competition, advertising, and antitrust cases.
A key factor is that a wide range of arguments and evidence will still be used under the new procedure, especially in the appeal phase, despite the fact that cases are expected to be processed under a procedure typically used for small claims.
In short, we are hopeful that the new system will gradually come to work as successfully as the one that the EUIPO has been responsible for since it was given jurisdiction for cases concerning trademarks and designs at the EU level in 1996. We will discover whether, with the total support and hard work of every professional who works in the field of IP law, these hopes become a reality in 2023.