Trademark Registration in Spain
A national Spanish Trademark registration protects your brand inthe whole Spanish territory and conferring to the owner exclusive rights to prevent others from trading with a confusingly similar mark. Registering a trademark in Spain is a must for all businesses and companies that are trading their goods or services in our country. It is also a good start-point if, for the moment, you are not intending to trade anywhere else in the world.
Why Spain? Considering that Spain is among the first European and global economies, its geostrategic location, population and fiscal incentives, trademarking your brand for the products you trade or services you render in the Spanish market can be relevant for the ROI of your business, no matter what the size of your company is or industrial sector in which you are doing business. See more
First to File System. Spanish Trademarks are registered on a first to file basis.
National Office. National trademark and trade name registrations in Spain are ruled by the Spanish Patent and Trademark Office (OEPM) based in Madrid, Spain.
What Can Be Registered? Any sign capable of being represented graphically, in particular words, including personal names, designs, letters, numerals, the shape of goods, their packaging, slogans, sounds, solely or combined. Besides the protection of individual marks, Spain allows registration of collective and certification marks (guaranteed marks) when certain requirements are met.
Who May Apply? All natural persons and legal entities, regardless of their citizenship or residence.
Priority Claim. Spain is member of both the World Trade Organization and of the Paris Convention ensuring Spanish nationals certain protection of their rights in all other signatory countries; The applicant of a Spanish trademark application may claim priority within a non-extendable 6 month period of filing as support for an international trademark registration and other foreign filing of the trademark, provided that these have exactly the same classes of goods and services, elements, or design being claimed. Also, any person or entity who has filed a trademark application in one of the signatory countries of the Paris Convention has a right to claim that filing date and priority for a trademark application in Spain if it is filed within the non-extendable six-month-period.
Multi-Class Application. A Spanish trademark application allows multi-class designation under the Nice International Classification of goods and services (45 classes), where class headings may be specified.
Validity. The Spanish trademark is granted for an initial period of ten years which can be renewed indefinitely by further periods of ten years on payment of renewal fees. All rights in a Spanish trademark registration date back to the filing date and not when the mark is granted.
Obligatory Use. A Spanish trademark can be revoked and removed from the register (and action which must be requested by third parties) if it is not used for a continuous period of five years following registration.
Courts for Trademark Infringement. Legal actions involving trademark infringement or unfair competition in Spain are to be taken before the competent Commercial Court located in the city of the Higher Court of Justice within the autonomous community where the defendant is domiciled, or alternatively where the infringement has taken place or had effect. When the claimant is invoking a EUTM, this is to be held by the Commercial Court of Alicante, Spain. Appeals lodged against decisions made by the Commercial Court of Alicante are revised by the Provincial Court of Appeal of Alicante.
How Abecsa Can Help You. The value-added services we provide for Spanish trademarks can be summarized as follows:
Plan Your IP Strategy. We can help you plan your IP protection strategy in the related territories, according to your needs and budget, but always with the aim to acquire the widest protection as possible by also avoiding common filing mistakes that could suppose a threat to the validity of your IP rights in the future.
Free Availability Search. We will conduct a free basic search in all Registers with effect in Spain (EUIPO, WIPO, OEPM) or an in-depth comprehensive search to help you finding a legally available trade mark for your new product or business before we apply for a Spanish Trademark and using a new product or business name by checking any earlier trademarks that could conflict with yours by finding if they are identical or confusingly similar. Our trademark search service can save you time, and a fortune in wasted design and incurred advertising costs, efforts and evade your potential legal liability in using by mistake a very similar name to someone else’s registered trademark, advising on risks to use a given sign in terms of infringement.
Filing. We would file the Spanish Trade Mark application on your behalf if it is available, foreseeing the relevant aspects and the correct manner it should be applied for: specifying the classes of goods and/or services, design, colours, etc. We have fixed fees for filings as well as for trademark prosecution in this national Office so you can foresee the estimated costs for your protection in Spain.
Prosecution. We will monitor your Spanish Trademark application until it is finally registered and duly inform you of every official communication we receive from SPTO (OEPM), along with our preliminary advice on the step to take, if needed, as well as by sending you the publications and informing you of all deadlines to have in mind, including reminders and next renewal due notices.
Defense. – Office Actions. If your trademark is objected by the Spanish Office (OEPM) based on formal requirements or if it is opposed by a third party, we can study the cited grounds for refusal or the relevance and differences of the earlier right on which the opposition has been based and file the Office action response in defense of your rights within the given time limit, by designing the adequate strategy so we likely ensure success and obtain the desired registration of your mark, and hence a solid enforceable trademark protection. Assistance is also provided if you want to oppose a conflicting application, by preparing the needed observations in support and filing the formal notice. We may require you to provide us relevant details or proof in support of our comments, facts or evidences to be alleged in the single exchange of observations during the opposition and appeal proceedings. – Litigation. In enforcement, we can represent and assist either the claimant or the defendant in trademark rights infringement or unfair competition proceedings with the Spanish and European Courts.
Watching Services. We will provide our clients with a watch service, keeping an eye on what third parties are attempting to register. If we find a new published application that could be potentially conflicting with your prior rights, then we will send you an alert proposing you to oppose within the statutory deadline.
Other Actions. We can handle any associated matter on Spanish Trademarks such us the recordal of licenses, change of names and ownership transfers.
Representation. All persons or legal entities outside of the EU and those from the EU without a domicile in Spain, or EU members without a Spanish domicile for notifications are required to be represented by a local representative. Non-EU members always need to be represented by a registered Official IP Agent (not only by a representative). We would be glad to be your agent! You can enquire us about the representation of our attorney and included associated services.
Spanish Trademark Registration Procedure and Time Taken. The entire process can take around six months for straightforward cases. The mark may be used in Spain prior to registration.
1. Filing of the Trademark Application in Spain. The application must be filed including the ownership identification of the proprietor, a graphical representation of the sign or wording in standard characters as well as the Nice classes and list of goods or services covered by the mark must be correctly specified. The filing date of a Spanish trademark application will confer the applicant with a provisional right for this distinctive sign while it is being examined and follows the mandatory proceedings.
2. Formalities Check. Once the trademark application in Spain is filed, it will be examined as to formalities, classification, wording of the sign,to ensure that the mark is distinctive and not descriptivewhere possible objections to the distinctiveness of the mark can be cited by the examiner, in such case, the Spanish Patent and Trade Mark Office (OEPM) will notify the applicant of the absence of formal requirements, who will commonly have 2 months for remedying the cited objection or for filing his own observations in reply.
3. Search and Notification of Earlier Rights. The Examiner of the Spanish Office will carry out a search and if any conflicting marks are identified which can be found similar or identical to an earlier Spanish trademark or trade name, the Spanish Office will notify the owner of the earlier Spanish trademark (but will never notify the owner of a regional EUTM registered with the EUIPO in the EU that also covers Spain and even if these two Registers run parallel and likely may conflict), thereby offering them the opportunity to oppose the newly filed application in Spain within two months from the publication of application of the trademark or trade name application.From 2001, the Spanish Patent and Trade Mark Office (OEPM) will no longer refuse a Spanish trademark application based on the existence of a prior conflicting Spanish or European Union Trade Mark application or registration. Therefore, if no owner of a prior European Union or National Trademark formally files an opposition, the trademark will proceed to registration.
4. Publication and Opposition Period. If an opposition notice is formally filed within the two month deadline after its publication, the proceedings can last for almost twelvemonths or more, where a single opportunity to exchange observations between the opponent (opposition) and applicant (counterstatement) would be given. Both the opposition and the contested provisional refusal require to be properly argued as the result of a final decision can turn into a limitation of the goods or services in the applied for Spanish trademark or into a partial or entire rejection of the Spanish trademark application.
5. Registration. If no earlier UE or National Trademark formally files an opposition and no other official objections arise or, if by the decision of the OEPM these are found successfully defended or remedied and overcome, the trademark will proceed to registration in Spain for ten years from application date. Registration shall be published in the Official IP Bulletin and the Office will issue the certificate of registration. This decision may be appealed within one month from the publication of registration.
6. Refusal. The Trademark application in Spain can be denied entirely or in part based on a prior National or European Union Trade Mark which has successfully opposed or if it was objected by the OEPM. This decision can be appealed within one month from the publication of the rejection.
International Registrations Designating Spain. IRs that designates Spain (Madrid Agreement & Protocol) will have the same legal effect as a Spanish Trademark and as if it was filed directly in Spain, which must follow the same process and comply with the same requirements. WIPO will require the Spanish Office, as to all national Offices, that a provisional refusal based on absolute grounds or on an opposition filed by a third party, must be notified to the International Bureau by the Spanish Office within the standard time limit of 12 up to 18 months and WIPO will notify the applicant of this action along with the time limit given by the Office to remedy or to file his observations in defense of the provisional refusal of the IR designating Spain. If any objection is found during the “ex officio” examination, or if an opposition is filedby other within 2 months from the publication of application, the Spanish Office will provisionally refuse the protection of the mark in Spain and publish it in the Official IP Bulletin, which can be responded within 4 months from the date of notification of said provisional refusal to WIPO. In such case, the applicant will be requested to appoint a registered IP Agent or representative in Spain to validly respond to this provisional refusal.
Information and Requirements to File a Spanish TradeMark Application:
- The full name and address of the applicant(s)-holder(s).
- The nationality or country of establishment of the applicant(s)-holder(s).
- VAT Number (NIF/NIE), only if the applicant is Spanish or established in a country of the EU.
- Full details of the trademark and if appropriate, and a good representation of the logo or design, indicating all generic colors to be described.
- Nice classes to be applied for and list of those preferred goods and services sold or to be sold under the trademark to be specifically included (45 classes of goods and services).
- The details of the application on which Convention Priority is to be claimed, if appropriate, within 6 months from first application date, along with the Certificate of Priority.
- The details of the national application(s) on which seniority is to be claimed, if appropriate.
- Your instructions on how we should proceed and approval of the likely costs.
- Your payment by bank transfer within 20 days from application and invoice date.
- A POA signed by the applicant (no legalization) is required by this Office.
Please do contact us via our contact form if you need advice or request our fees on any trademark issues such as:
- Registering your mark in Spain or an International Registration designating our country, or looking for the associated trademark searching and trademark watching services.
- Seeking our Attorney’s representation and appointment in your trademark application or registration.
- Opposing a confusingly similar Spanish trademark applied for registration by others.
- Defending your challenged Spanish or IR designating Spain, from objections, oppositions or appeals.
- Taking legal action against infringement of your trademark right in Spain or in Europe being used by another person or company.
- Renewing your Spanish trademark for an additional ten year period.
- Licensing the use of your trademark or selling them and want to ensure the assignment of the trademarks to others.
Confidentiality. It would be advisable that you do not disclose your trademark protection plans to avoid others registering it before you. However, you can safely discuss them with us, because as registered patent attorneys and lawyers, any information you disclose to us is legally privileged and confidential, using it strictly for the purpose or needed service we are instructed to handle in your name.