SPAIN Law and Practice Contributed by: Marina Gómez, Arochi & Lindner
• Relative grounds – the mark infringes earlier rights (eg, prior trade marks, copyrights, or geographical indications). • Bad faith – the trade mark was registered in bad faith by the applicant. Revocation grounds for trade marks are: • Non-use for five consecutive years post- registration. • The mark has become generic through the proprietor’s inactivity. • The mark is misleading due to the manner of its use. • Failure to renew the registration, or voluntary surrender. Revocation or cancellation actions are initiated by filing with the SPTO, which informs the affect - ed party and begins proceedings. 5.3 Ability to File an Opposition or Revocation/Cancellation In Spain, any party with a legitimate interest can file an opposition to a trade mark application. This includes holders of prior rights, such as earlier trade marks, trade names, well-known unregistered marks protected under the Paris Convention, and other rights like copyrights or geographical indications. Additionally, trade mark owners can oppose applications filed by unauthorised agents or representatives. Owner - ship of a registered trade mark is not manda - tory; demonstrating earlier rights or a legitimate interest suffices. Representation by an attorney is required only for opponents domiciled outside the EU, while EU-based parties may represent themselves. The official fee for filing an opposition with the SPTO is approximately EUR38. Attorneys’ fees for opposition procedures typically range from
EUR400 to EUR2,500, depending on the com - plexity of the case and required evidence. Revocation or cancellation actions may be initi - ated by any party with a legitimate interest. For relative grounds, claimants must provide evi - dence of earlier rights. 5.4 Opposition or Revocation/ Cancellation Procedure In Spain, the opposition procedure against trade marks is an administrative process handled by the SPTO. Once a trade mark application is pub - lished in the Official Bulletin of Industrial Prop - erty ( Boletín Oficial de la Propiedad Industrial , or BOPI), interested parties have two months to file an opposition. The process is conducted in writing, without hearings, and requires the oppo - nent to submit documentation supporting their claims, such as proof of earlier rights or reputa - tion. Discovery as understood in common law jurisdictions does not exist in Spain; the process relies on the parties’ submissions of documen - tary evidence and arguments. The SPTO reviews the opposition and issues a decision, which can be appealed. Revocation and cancellation actions can be brought before the SPTO or the civil courts. The SPTO handles cases such as non-use, mislead - ing use, vulgarisation, absolute grounds (eg, lack of distinctiveness) and relative grounds (eg, con - flicts with earlier rights). The SPTO process is administrative, involving formal filing, a contradictory phase, and resolu - tion. Civil courts address revocation or cancella - tion when they arise as counterclaims in infringe - ment cases or broader disputes.
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