The following article analyses one of the main developments which the Spanish Trademark Law 17/20011 introduced: arbitration as a solution to legal disputes following the registration of a trademark.
1.- ARBITRATION IN THE 2001 TRADEMARK LAW
In 2001, the legislature incorporated arbitral institution within Trademark Law, as had already been done in other sectors regulated by special legislation. This incorporation has facilitated a simple,quicker and more economical avenue, so that citizens can resolve conflicts.
The Trademark Law arbitral framework poses as a provision of private Law. It distances itself, therefore, from administrative arbitration regulated by Public Administration and General Administrative Procedures Law 30/1992 dated 26th November.
1.- Differences with previous regularisation: Art.28 of Trademark Law 2001
The idiosyncrasies envisaged by the Trademark Law are contained in Art.28. 1.1. The Subject Matter of Arbitration Art.28. 1 and 2.
The general rule which the subject matter of arbitration refers to is stated in Art.28.1. Disputes generated throughtrademark registration will be subject to arbitration. This general rule is complemented in the following paragraph, confining those disputes which make reference to the bans in the Trademark Law’s Articles. 6.1.b, 7.1.b, 8 and 9 to arbitration.
The Trademark Law forbids holders of trademarks or identical commercial names, identical products or services to submitany dispute to arbitration arising from their registration. 1.2 The subjective side: Art.28.3
Art.28.3 specifies who will have to be part of the arbitration agreement. It must be signed by the applicant of the trademark and by:
- The holders of the previous trademark which caused the trademark refusal (or who had opposed its registration)
- The licensees. This should be exclusive and with a licence signed in the Spanish Trademark and Patent Office.
- The other parties in the administrative proceedings opposing registration of the trademark.
As regards the last paragraph of this article, it is essential to take into account that according to Art.31 of Law 30/1992 interested third parties can invoke a higher appeal. If someone has already entered into appeal, it will have to be part of the arbitral agreement. 1.3 At the time of finalizing the arbitration agreement and notification: Art.28.4
OEPM (the Spanish Trademark and Patent Office) must be notified of the arbitration agreement by all interested parties once the administrative proceedings of registering the trademark are concluded, but before the administrative act has been firmly adopted. We find ourselves with a time-limit. The period of time to enter into higher appeal is a month; the maximum period to issue and notify the resolution submitted is three months.
1.4 Effects of arbitration agreement on administrative appeals:Art.28.5
Once the arbitration agreementis signed, the rule expressly states that it will not be fitting to lodge an appeal about the question submitted to arbitration, while an agreement is ‘live’. However, some questions arise at the time of interpreting it. 1.5 Effects of the arbitral award: Art.28.6
The rule insists on theeffectsof a firm arbitral award being enforceable in accordance with Art.37 of theArbitration Law, applicable where not provided for in this article. That the award produces enforceable effects, differing to administrative arbitration, is of great importance. This is justified, because this arbitration has been conceived as an alternative to administrative appeals and through the route of legal proceedings. The award will be pronounced on the compatibility of the signs at issue, thesebeing the limits of the final decision.
The consequence of this is that OEPM (the Spanish Trademark and Patent Office) will take responsibility for its implementation. 1.6 Proceedings and time period to communicate the award to OEPM: Art.28.7
Art.28.7 states that the firm arbitral award should be communicated faithfully to OEPM within six months from receiving notification of the arbitral agreement being finalised. Therefore, the starting date is the notification datereceived by OEPM. As the law does not specify who should send this notification, it would be convenient for this question to be specified within the arbitration agreement. It is possible that the arbitrator could be assigned to carry out this notification.
It is from this date thatthe time period of six months will be calculated in order to communicate the arbitration award. We find ourselves with a deadline. The Law states that, beyond this date, it will not proceed to implement the arbitration award.
On incorporating arbitration so as to resolve questions relating to conceding a trademark, the 2001 Trademark Law opened up a new possibility. 1.Advantages
The advantages of using arbitration proceedings are based mainly on achieving the fastest solution to the conflict as well as the security of the question in dispute being resolved by industrial property experts.
Likewise, arbitration can be assigned to an Arbitration Chamber or Court. The additional advantage of this is based on the fact that it is not necessary that the parties agree in detail which procedural avenue the arbitrators will have to follow until they make the award. The institution usually has its own rule which will be applicable in these cases.
With arbitration,questions can get sorted outwhich, in practice, could create greater problems. For example, if, the parties involved are dealing with an international matter, arbitration has to find ‘neutral ground’.
Allthese questions mean the possibility of arbitration is even more convenient so that the interested parties can resolve legal disputes and prove the trademark registration.
Even so, there is definitely a need to raise certain criticisms on this regulation which legislaturehas adopted:
2.1 Arbitration closerto realitycould be established for the interested parties in conflict,so as to deal with all types of disputes arising in trademark registration now that the questions raised can be analysed by arbitrators with reputable knowledge of Trademark Law and of the real marketplace. But this action has been limited to disputes on certain prohibitions; conflicts are excluded with identical signs, which are dealt with in articles 6.1.a and 7.1.a. of the Trademark Law. This may lead to clear damage, for the defence of holders of trademarks or commercial names which could be affected by this, which would then have to be submittednecessarily to the jurisdiction body.
2.2 It makes the implementation of an arbitral award (which, furthermore, grants weight to the final decision) dependent onnotifying OEPM within a determined period of time. It can generate a lot of problems, of a practical nature, at the time of the arbitral processdeveloping.
Whatever the case, the possibility of extending the extrajudicial resolution of conflict to a new sphere is always welcome.