New procedure for challenging decisions of the SPTO that exhaust administrative remedies

23 January 2023

Find out about the new procedure for challenging decisions of the SPTO that exhaust administrative remedies, as well as the courts that will assume this jurisdiction as of 14 January 2023.

23 January 2023

This year has seen a revolution in the system for challenging administrative decisions from the Spanish Patent and Trademark Office (SPTO) in the courts. With this radical change, we say goodbye to the administrative litigation chambers of the High Courts of Justice and the classic contentious-administrative appeal against decisions of the Spanish Patent and Trademark Office relating to industrial property rights. At the same time, we are happy to welcome the provincial courts specialised in commercial matters and the new procedure for challenging this administrative activity in court. In this article, we analyse the news.

FAREWELL

This big change on our system has implied the end of:

a) The competency of the administrative litigation chambers of the High Courts of Justice of each of the 17 Autonomous Communities and, in particular, the 2nd Section of the Madrid Court, which has been hearing practically 100% of the contentious-administrative appeals. This is due to the fact that the SPTO’s headquarters are located in Madrid.

b) The judicial procedure by which these Courts were governed to resolve appeals.

In Spain the principle of specialisation lies at the heart of the attribution of jurisdiction to the courts. Specifically, according to the latest amendment of the Trademark Act, as of 14 January 2023, the SPTO will not only hear the refusal/granting of industrial property rights, but will also hear actions for the invalidity and revocation of trademarks that had been reserved for the commercial jurisdiction, Nevertheless, the commercial courts will retain its jurisdiction when invalidity/ revocation actions are filed through a counterclaim. This complies with a requirement of the 2015 Trade Mark Harmonisation Directive.

Bearing in mind that, in the processing of this type of action (nullity / revocation of trade marks), there is a civil law ingredient that affects issues that are not only of public interest, the legislator has decided that the contentious-administrative jurisdiction is not the most appropriate. In accordance with this thesis, and due to the principle of specialisation mentioned above, the legislator has decided that this administrative jurisdiction should be replaced by the Commercial Jurisdiction in all its aspects.

HELLO: WELCOME TO THE NEW COURTS

As of 14 January 2023, the Provincial Courts with specialised commercial chambers will assume the jurisdiction. Specifically, those of Madrid, Barcelona, Valencia, Bilbao, Granada, A Coruña and Las Palmas de G. Canaria.

This means that anyone wishing to lodge a judicial appeal against decisions of the SPTO will have to do so before the following Courts:

c) If the Provincial Court that corresponds geographically with the address of the appellant is in the Autonomous Communities listed above, that will be the competent Court. Alternatively, the appeal can be filed before the Provincial Court of Madrid, as this is where the SPTO’s headquarters are located.

d) If the appellant has no domicile in any of these Autonomous Communities, the claimant will have no choice but to bring the case before the Provincial Court of Madrid. For the time being, this means that the action will be brought before the 28th Section, which specialises in commercial matters, but only for a short time.

In this context, and in view of the avalanche of appeals expected in the capital of Spain, a new Section has been created in the Provincial Court of Madrid, the 32nd, which will be ready and running on 31 March 2023, two and a half months after the new attribution of jurisdiction. The reason why both dates (14/01/2023 and 31/03/2023) have not coincided in time seems to be budgetary and logistical problems in the Department of Justice of the Community of Madrid, which has to provide the personnel and administrative resources necessary.

Reference shall be made as well to the fact that this 32nd Section of the Madrid Provincial Court will also rule on all appeals lodged against the judgments and orders of the Commercial Courts in all other industrial property rights proceedings.

In short, fortunately, and even though the Judiciary has ostensibly improved its knowledge on IP, it seems that we are going to enjoy a Court that is mega-specialised in this area. In my opinion, shared with some of my colleagues, this will certainly have an effect when it comes to litigating before the Courts and Tribunals of Madrid, as long as the laws of jurisdiction allow it, of course.

A combination of the former contentious-administrative appeal and oral proceedings has been established to challenge administrative decisions issued by the SPTO that exhaust administrative channels.

The phases of the process are, broadly speaking, the following (the undersigned is at the disposal of anyone seeking clarification):

1. Filing oof the appeal within 2 months from the date of publication in the IP Gazette of the decision rejecting / upholding the appeal to be challenged. So far, the procedure will be practically identical to the previous one.

2. Admissibility of the appeal: The 28th Section of the Provincial Court of Madrid from 14/01/2023 until 31/03/2023, and the 32nd Section from this date onwards, will issue a resolution admitting or rejecting the admissibility of the appeal, with a request to the SPTO to forward the administrative file.

3. Formalisation of the claim by the appellant and a response by the State Attorney who represents the SPTO (author of the administrative decisions) and possible interested parties after receipt of the administrative file.

4. Hearing. Although it is merely a personal opinion, we believe that it will often not be requested by the parties, especially when the evidence is merely documentary, which will lead to a judgement being issued directly.

CONCLUSIONS

We welcome the news because our legislators and judges are committed to improving the resolutions on this matter. We hope as well that this new system will speed up contentious-administrative proceedings which, on average, took two years.
Nevertheless, we should never disregard the fact that a such a change is bound to cause shortcomings, errors and the occasional displeasure to the parties. Having said this, we believe that these foreseeable obstacles will be surely outbalanced by the advantages of the new system.

5/5 - (1 vote)

José Luis López

Lawyer.Legal Advice Department.

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