By Javier Serrano Irurzun, Bamboo.legal
Trademark registration is a critical process for businesses aiming to protect their brand identity. In Spain, this process has its unique nuances, shaped by national regulations, European Union laws, and international treaties. Whether you are a business owner, entrepreneur, or legal professional, understanding the peculiarities of brand protection in Spain is crucial for securing your brand’s legal protection.
Contents
1. Understanding Trademarks in Spain
2. Types of Trademarks in Spain
3. The Trademark Registration Process in Spain
4. Peculiarities and Considerations in Spanish Trademark Law
5. Challenges and Common Mistakes in Spanish Trademark Registration
1. Understanding Trademarks in Spain
A trademark in Spain is defined as a sign capable of distinguishing goods or services of one enterprise from those of other enterprises. This can include words, logos, slogans, colors, sounds, and even shapes. The Spanish Patent and Trademark Office (Oficina Española de Patentes y Marcas, OEPM) is responsible for the trademark registration and brand protection within the country.
2. Types of Trademarks in Spain
Before delving into the registration process, it’s essential to understand the different types of trademarks you can register in Spain, inter alia:
- Word Marks: These consist solely of words or letters, without any graphic element or particular font.
- Figurative Marks: These include logos or symbols that have a graphic design, with or without words.
- Three-Dimensional Marks: These are trademarks that protect the shape of goods or their packaging.
- Sound Marks: Non-traditional trademarks that protect a specific sound associated with a brand.
- Color Marks: These protect just the color of a particular good or service, not related with a name, a logo or a shape.
3. The Trademark Registration Process in Spain
1. Preliminary Search
Before brand protection in Spain, conducting a thorough trademark search is advisable. This step ensures that your desired trademark is not already in use or registered by another entity. The OEPM offers a searchable database, but it is recommended to seek professional advice to conduct a comprehensive search. Using TMView here is normally a good start point.
2. Application Submission
Once the search confirms that your trademark is available, the next step is to submit an application to the OEPM. The application must include:
- Applicant’s details: Name, address, and nationality of the individual or entity applying for the trademark.
- Representation of the Trademark: A clear representation of the mark (word, logo, sound, etc.).
- List of Goods/Services: The goods or services to be protected under the trademark, categorized according to the Nice Classification. Having checked the Nice Classification and prepared a list of the goods and services that are wanted to be covered by the trademark before submission is always advisable.
- Payment of Fees: The application fee must be paid at the time of submission.
The application can be filed online through the OEPM’s website or in person at the office. Also check how to register a patent in Spain.
3. Formal Examination
After submission, the OEPM conducts a formal examination to ensure that the application complies with the legal requirements. This examination checks whether the application contains all necessary formal information and that the application fees have been correctly paid.
If the OEPM detects any deficiency during the formal examination, it will request the applicant to amend them within a deadline of 1 month.
4. Publication and Opposition
If the application passes the formal examination, it is published in the Boletín Oficial de la Propiedad Industrial (BOPI). This publication allows third parties to oppose the registration within a two-month period. Opposition can be based on various grounds, including the likelihood of confusion with an existing trademark, or the trademark being descriptive or generic.
5. Substantive Examination
If no oppositions are filed, or if they are resolved in favor of the applicant, the OEPM proceeds with a substantive examination. This involves two steps:
1. First, examining whether the application has received oppositions or not. If the application has received an opposition, the OEPM suspends the registration process and notifies a provisional refusal to the applicant, that is given a deadline of 1 month for replying to the opposition. Within that month, the applicant can directly face the opposition filing a statement of grounds, request proof of use to the opponent if the opposing marks have been registered for more than 5 years, or attempt a negotiation with the opponent. Legal advice is strongly recommended here.
2. Second, if the trademark application may incur in an absolute ground for refusal (e.g. being non-distinctive, descriptive, deceptive, contrary to public order and morality, etc.). If the OEPM consider it does, it suspends the registration process and notifies a provisional refusal to the applicant, who must reply within 1 month.
6. Registration and Publication
Once the trademark passes the substantive examination, the application proceeds to registration and a certificate of registration is issued several months later. The registration is also published in the BOPI, and the trademark is added to the national register, providing the owner with exclusive rights to protect brand and use the mark in Spain. A smooth process up to registration might take around 8 months from filing.
4. Peculiarities and Considerations in Brand Protection in Spain
1. Language Considerations
Spain has multiple official languages, including Spanish, Catalan, Galician, and Basque. When registering a trademark for brand protection in Spain, it’s essential to consider how the mark will be perceived in different languages. A word that is acceptable in Spanish might have a different meaning or connotation in Catalan or Basque, potentially affecting the trademark’s distinctiveness or acceptability.
2. Distinctiveness Requirement
Spanish trademark law requires that a mark must be distinctive to be registered. This means it should be capable of distinguishing the goods or services of one enterprise from those of another. Marks that are merely descriptive or generic are generally not registrable. For example, a term like “Café” for a coffee shop may be rejected unless it is combined with a distinctive element. Even in such case, the protection will be granted for the combination of the word “Café” + the distinctive element, not to the word “Café” by itself.
3. Opposition Proceedings
The opposition process is a crucial aspect of trademark registration for brand protection in Spain. During the two-month opposition period, any interested party can challenge a trademark registration. Since this period is shorter than in some other jurisdictions, it’s important to act quickly if potential conflicts are anticipated. As the OEPM does not act ex officio on relative grounds for refusal, it is strongly advisable to hire a local firm’s watching service to monitor for identical or similar applications in the future.
4. Renewal and Maintenance
Trademark registrations in Spain are valid for ten years from the date of application and can be renewed indefinitely for additional ten-year periods. However, if the trademark is not used within five years of registration, it may be subject to cancellation due to non-use. Therefore, maintaining continuous use of the trademark is essential for retaining your rights.
5. European Union Trademark (EUTM) Considerations
Spain is a member of the European Union, which means that trademarks can also be registered as European Union Trademarks (EUTM) through the European Union Intellectual Property Office (EUIPO). An EUTM provides protection in all EU member states, including Spain. However, it’s important to note that an opposition or cancellation in one EU member state can affect the entire EUTM. Therefore, businesses should carefully consider brand protection in Spain or through the EUIPO.
5. Challenges and Common Mistakes in Spanish Brand Protection
1. Inadequate Preliminary Search
One of the most common mistakes is failing to conduct a thorough preliminary search. This can lead to the rejection of your application or legal disputes if your trademark conflicts with an existing one. Engaging a professional to conduct this search can help avoid such issues.
2. Overlooking the Opposition Period
The opposition period is a critical phase in the trademark registration process. Failure to monitor the BOPI for potential oppositions can result in missing the opportunity to defend your brand. A subsequent invalidation action is possible once the trademark is granted; but the process is more expensive and a bit more complex than if opposition is filed on time before registration.
3. Failure to Maintain Use
As mentioned earlier, trademarks in Spain can be canceled if not used within five years of registration. Many businesses register trademarks but fail to use them actively, risking cancellation. Ensure that your trademark is consistently used in commerce to avoid this pitfall. In that regard, it is important to note that trademarks must be used as registered, and for the same goods and/or services. Slight modifications are tolerable, but sticking to the mark as registered is always advisable.
6. Conclusion
Brand protection in Spain involves several steps, each with its peculiarities and challenges. From understanding the types of trademarks to navigating the opposition process, being aware of these nuances can significantly increase the chances of successfully registering your trademark. Whether you opt for a national registration or a European Union Trademark, thorough preparation and a clear understanding of Spanish trademark law are essential for protecting your brand in this diverse and dynamic market.
By taking these steps and seeking professional advice when necessary, businesses can secure their trademarks and protect their brand in Spain, a crucial market within the European Union.
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