SPAIN Law and Practice Contributed by: Marina Gómez, Arochi & Lindner
absolute grounds, it will notify the applicant and allow them a period of one month in which to submit any observations they deem appropriate. Within this period, the applicant may: • withdraw the application; • limit, amend or divide the application; or • submit arguments on the grounds that the objection contradicts the provisions of the law. 4.11 The Madrid System Spain is a party to the Madrid system. An appli - cation should be filed on the official form pro - vided for by the Common Regulations under the Madrid Agreement and Protocol, by: • the proprietor of a trade mark registered in Spain under the Madrid Agreement; or • the proprietor or mere applicant for a trade mark under the Protocol. 5. Trade Mark Procedure for Inter Partes Proceedings 5.1 Timeframes for Filing an Opposition or Cancellation A party can submit an opposition to a trade mark application within two months from the date of its publication in the SPTO Bulletin. Extensions of time to file an opposition are not permitted in Spain. According to the provisions of Article 26 of the TM Act, the parties may file a joint request for a stay of proceedings for a maximum period of six months to attempt an amicable resolution before the opposition process continues.
Revocation actions based on non-use of a trade mark can only be filed after five years of registra - tion if the mark has not been used. Other revocation or cancellation actions, such as those based on absolute or relative grounds, can generally be filed without a specific time limi - tation unless barred by acquiescence or other legal doctrines. For copyrights, there are generally no specific time periods for cancellation, as copyright dis - putes often focus on infringement or validity of ownership rather than revocation. 5.2 Legal Grounds for Filing an Opposition or Cancellation Opposition to a trade mark application can be based on: • Absolute grounds, which include lack of dis - tinctiveness or descriptiveness, or violation of public policy. • Relative grounds, which include – (a) Identical or similar marks for identical or similar goods/services, creating a likeli - hood of confusion. (b) Well-known unregistered marks protected under the Paris Convention. (c) Infringement of earlier rights, such as copyrights, geographical indications, or names/images of individuals. (d) Applications made by an agent without the owner’s authorisation. Cancellation grounds for trade marks are: • Absolute grounds – the mark was registered despite lacking distinctiveness or descriptive - ness, or despite violating public policy.
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