This is a procedure which makes it possible to re-establish rights after failure to observe a time limit providing there is evidence the applicant acted with the due care required by the circumstances.
The current Spanish Trade Mark Act, Act 17/2001 was published in the Official State Gazette nine years ago.
This law introduced several new items which mainly followed the need to standardise the Spanish system with the community system and other international systems.
These new items included a national standard to regulate the concept of restitutio in integrum or re-establishment of rights aimed at preventing a situation in which failure to observe a time limit leads to the loss of a right, providing it can be shown that the applicant acted with the due care required by the circumstances.
The justification for this mechanism is that it obeys the nature of industrial property rights and the importance they have for companies, especially regarding inventions where, for example, non-payment of an annual fee may lead to the invention passing to the public domain, with all that entails following years of research and investment.
Within the area of industrial property, it is necessary to demonstrate a just cause for an application for re-establishment of rights to be accepted.
Specifically, it is necessary to verify that a period has not been observed "even though all the due care required by the circumstances has been demonstrated".
This is an ambiguous expression which is open to interpretations and which would need to be analysed on a case-by-case basis. However, it does not seem suitable to demand an excessively rigorous interpretation as, otherwise, this could leave the mechanism without any substance.
It is also important to bear in mind that in the category of inventions, the Spanish Patents Act includes the possibility of re-establishing patents which have expired providing the existence of force majeure can be proved.
The concept of force majeure has extra requirements than the so-called due care required by the circumstances. It is even sometimes difficult to distinguish force majeure from another concept: unforeseen circumstances.
In the end all these terms may be synonyms. However, the criteria to separate them may lie in the seriousness of the event, with those of force majeure being more serious as they have to be inevitable as well as unforeseen.
Returning to the concept of demonstrating the due care required by the circumstances, an example is the situation admitted by the Courts (sentence of the High Court of Madrid, 1st Section, of 23 January 2006) relating to the validation of a European patent when that validation was not carried out in the required period. However, the party falsely believed that the European patent had been validated in all the states in which the patent holder had shown interest.
An employee of the foreign agent who received the instruction made a specific error which, due to work interruption, meant that the employee failed to pass on the appropriate orders to the Spanish agent responsible for validating.
However, it was demonstrated that the patent holder’s will was to validate in Spain and this was accepted by the foreign agent.
This sentence expressly states that this is a cause accepted by the European Patents Office - the benchmark body in this issue -, that is, the false belief of the employees of a patent agent "of having validated the European patent in all the States wanted by the client, with greater monitoring not being required from the company or the superior, unless there were clear signs of a lack of competence or performance or that discretional work had been delegated to administrative personnel who did not have the required qualifications".