Nullity and administrative Expiration of the Distinctive Signs before the SPTO

After a long time of preparation for everything to get going, the long-awaited day finally arrived!

On January 14, 2023, the direct jurisdiction of the Spanish Patent and Trademark Office, O.A. (SPTO) has entered into force in the resolution of requests for nullity and expiration.

The implementation of administrative nullity and expiration procedures constitutes one of the greatest challenges that has required the incorporation into Spanish law of Directive (EU) 2015/2436 of the European Parliament and of the Council, of December 16, 2015, regarding the approximation of the laws of the Member States in the field of trademarks, whose transposition instrument was Royal Decree Law 23/2018, of December 21.

Currently, the Trademark Law of 17/2001 and its Implementing Regulations detail the regulation of nullity and administrative expiration. These new procedures replace the claims that until now had been made directly before the civil courts.

For this reason, from January 14, 2023, the necessary procedures to initiate and process applications for administrative nullity and expiration of distinctive signs are available at the electronic office of the website of the Spanish Patent and Trademark Office.

These procedures can be requested online and easily, by accessing the corresponding electronic forms. Once the procedure is finished, a draft will be generated where you can verify that the data entered is correct and, once submitted, the receipt will be issued with the details of the procedure, without it being necessary to attach any additional form.

Likewise, some paper processing forms have been created, available on the SPTO website, which can only be used by users who are not obliged to interact electronically with the Administration, in accordance with the provisions of Law 39/2015 of Common Administrative Procedure of Public Administrations and the Second Additional Provision of the Execution Regulation of the Patent Law.

As is logical, because of these changes, changes have also been generated in the Official Gazette of Industrial Property (BOPI). Specifically, three of the templates that affect Volume 1 (BRANDS AND OTHER DISTINCTIVE SIGNS) have been modified and will replace the current ones.

We take this opportunity to recall that, during December; the SPTO held an information session to publicize these procedures and published an informative Handbook on nullity and administrative expiration.

More information

Informative Handbook on nullity and administrative expiration.

Videos of the conference on nullity and administrative expiration

BOPI Templates