SPAIN Law and Practice Contributed by: Marina Gómez, Arochi & Lindner
5.5 Legal Remedies Against the Decision of the Trade Mark Office An appeal may be lodged against the SPTO’s decision – rejecting opposition filed against a trade mark application – within a period of one month from the date of notification of the office’s decision. No administrative appeal may be lodged against the decision of the SPTO, but a judicial appeal may be lodged within two months of notification of the office’s decision terminating the proceedings. 5.6 Amendment in Revocation/ Cancellation Proceedings Amendments to a trade mark or its list of goods and services during revocation or cancellation proceedings are limited. The trade mark may not undergo substantial changes in a way that changes its distinctive character, but minor cor - rections may be permitted. The holder can narrow the scope of the registration by removing spe - cific goods or services, often to address claims of non-use or misleading use. However, expanding the scope or introducing new goods or services is not allowed. Such amendments must comply with the procedural rules of the SPTO. 5.7 Combining Revocation/Cancellation and Infringement Once a trade mark infringement claim has been brought before a court, the defendant may not file an application for invalidity or revocation of the trade mark before the SPTO as a defence, but must file a counterclaim before the court. 5.8 Measures to Address Fraud Pursuant to the provisions of Article 2 of the TM Act, where the registration of a trade mark has been applied for by fraudulently infringing the rights of a third party or in violation of a legal
or contractual obligation, the injured party may claim ownership of the trade mark in court. Once the claim has been filed, the court must notify the SPTO of the filing of the claim against its entry in the Register of Trade Marks and, if appropriate, must order the suspension of the trade mark registration procedure. If, as a result of the judgment, there is a change in the ownership of the trade mark, the licences and other rights of third parties to the trade mark will be extinguished, without prejudice to their right to claim from the transferor. 6. Assignments and Licensing 6.1 Assignment Requirements and Restrictions In accordance with the provisions of Article 46 of the TM Act, the trade mark and its application may be transferred, for all or part of the goods or services for which it is registered or applied for, and entered in the Register of Trade Marks. In principle, there is freedom of form; however, the SPTO requires a valid document of assignment for the change of the owner of the rights. As far as copyright is concerned, the assignment may only be made in respect of economic rights, and is required to be in writing. The assignment will be limited to: • the right or rights assigned; • the methods of exploitation expressly pro - vided for; and • the time and territorial scope to be deter - mined.
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