Spain has adopted a new Trademark Law which is expected to come into force on July 31, 2002. The principal changes effected under the new law are summarized below.

1) A Declaration of Use will no longer be required to support the renewal of a trademark registration.

2) A single application will now be able to cover several classes of goods and/or services.

3) The Spanish Trademark Office will no longer cite ex officio prior marks it considers to be similar to the mark being examined. Instead, the owners of such prior marks, which are considered by the Examiner to be similar to the junior mark, will be notified of the publication of the new application, so that they are given an opportunity to oppose it.

4) The owner of a senior trademark who has acquiesced in the use and/or registration of a conflicting mark for 5 consecutive years may not thereafter object to the use and/or registration of the junior mark, unless he can prove bad faith.

5) The new Act re-establishes the possibility of filing an opposition on the basis of Article 8 of the Paris Convention, under which a trade name is protected without registration, whether or not it forms part of a trademark. However, it will be necessary to support such opposition with proof of use or extensive reputation of the trade name.

6) A provision for the exhaustion of rights has been introduced.

7) Well-known marks have been more clearly defined and granted broader protection.

8) The concept known as restitutio in integrum (i.e., re-establishment of rights) has been introduced. Any party to proceedings before the Spanish Patent and Trademarks Office will be entitled, upon payment of a fee, to seek re-establishment of rights lost as a result of the non-observance of a time limit. The applicant will have to show that, despite having taken all steps that might reasonably have avoided non-compliance, he was unable to meet the deadline.

9) Titles of Establishment have been abolished.

10) Provision for the resolution of disputes between trademark proprietors by arbitration has been introduced.

11) Under certain circumstances, it will be possible to place proceedings in suspense; for example, if an opposition is based on a pending application, the opposition proceedings can be held in abeyance until the outcome of the application.