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Can I Register a Sound or a Taste as a Trademark? Major Changes of the Trademark Act Amendment

22 de July de 2020

The entry into force of the new Trademark Act leads to the introduction of significant changes to comply with European legislation. We review the major changes to take into account both for new trademark applicants and for those who already own one.

Can I Register a Sound or a Taste as a Trademark? Major Changes of the Trademark Act Amendment

Facilitating trademark registration is one of the major changes introduced by Royal Decree-Act 23/2018. The new regulation, which came into effect on 14 January 2019, aims to homogenise the European legislation, optimising application and registration procedures and increasing legal security in the European Union.

Major Changes to the Trademark Act

Major changes to adapt to the European directive include:
Concept and new types of trademark. The requirement of having a graphic representation is eliminated. In view of the amendment, being represented in a clear, precise, intelligible, durable manner -without specifying the means- is sufficient for a trademark to be registered.
This change opens up the possibility of registering non-conventional marks (non-traditional distinctive signs) such as three-dimensional elements (packaging), but also sensitive marks such as sounds, smells, tastes, shapes and motion (gestures, holograms, animated images) or position marks (arrangement on the product).

Who can apply for a trademark registration? The amendment provides the right for any natural or legal person to request the registration of a trademark or trade name. This change eliminates the applicant’s nationality or specific residence requirement.
More competences to the Spanish Patent and Trademark Office. One of the novelties of the new directive is that it gives powers to the SPTO to resolve the nullity or expiration of a trademark. This measure, which aims to streamline processes and reduce costs, will not come into effect until 14 January 2023.
Limitation to the registration of equal or similar signs. For the registration of a sign similar or identical to another, the actual and current use of the mark shall be accredited, in addition to being registered for at least five years.

Changes to Prohibitions on Registration

The new directive introduces new provisions on trademark registration limitations.
Well-known or renowned trademarks. The concept of well-known trademarks -known by a specific sector- disappears and renowned trademarks are established as the only category, in reference to those known by the general public. The owner of a renowned trademark can oppose the registration of identical or similar trademarks, even if they designate different products or services.
Enhanced protection for Geographical Indications and Denominations of Origin. With the new directive, the registration of trademarks identical or similar to that of a PGI or DO, traditional wine terms, traditional specialties and plant varieties can be denied, as long as it is duly registered.
The prohibition on trademark registration based on functionality is also extended. With the amendment of the Act, in addition to shape, any distinctive element that is imposed by its nature and that is necessary to obtain a technical result or provides substantial value to the product is considered.
The Act governs the right to prevent the introduction into Spain of goods from third countries containing identical signs, even if they are not intended to be marketed here (in-transit goods).
One of the new aspects regarding registration limitations is related to the larger number of situations in which the owner can prohibit the use of a trademark, including its use in comparative advertising.

Effects of the Trademark Act’s Coming into Effect

The possibility of registering a sound, a hologram or even a scent, indicates that -thanks to technology- the concept of trademark continues to evolve. Regulations seek to adapt the operation of trademark registrations to new challenges, providing greater legal certainty. What consequences are expected?
Below we summarize some of the expected effects with the implementation of the new Directive.

  • Even though it will not come into effect until 2024, processes will be removed from the judicial system.
  • Shorter registration times.
  • Elimination of legal costs.
  • Requests for more nullity and expiration actions are expected.
  • Complications are expected in opposition proceedings.
  • It will be necessary to prove the use of the trademark, so all documentation related to its use must be kept.
  • It will increase legal certainty.

At Gesvalt, we have a specialised team and we have advised on brands and intangible assets (brand names, patents, licences, goodwill) for more than 20 years. Check out our brand valuation services and get in touch with us.