TRADEMARKS FILING AND PROSECUTION IN SPAIN
Article 4 of the Trademark Act i.e. Law No. 17/2001 of December 7, 2001, on Trademarks (as amended up to Royal Decree-Law No. 23/2018 of December 21, 2018) provides that all signs may constitute trademarks, especially words, including names of people, drawings, letters, figures, colors, the shape of the product or of its packaging, or sounds, provided that such signs are appropriate to:
a) distinguish the products or services of one company from those of other companies; and
b) be represented in the Trademark Registry in such a way that it allows the competent authorities and the general public to determine the clear and precise object of the protection granted to its owner.
A Trade mark or a Trade name in Spain is a distinctive sign. Its function is to identify a company in commercial traffic and identify it, individualize it and distinguish it from other companies that carry out identical or similar activities.
Types of Trademarks protected in Spain
The various types of trademarks protected in Spain are Denominative, figurative, three-dimensional, position marks, pattern marks, movement marks, sound, color, hologram, multimedia marks.
Trademarks that cannot be registered in Spain
The Trademark Law of Spain provides for prohibitions established in Articles 5 to 10 of Law 17/2001, on trademarks. As per the provision in order to be registered a trademark must respect a series of public (absolute registration prohibitions) and private (relative registration prohibitions) interests.
| Relevant office | Spanish Patent & Trademark Office (SPTO) |
| Filing principle | First-to-file |
| Nice classification | Yes |
| Paris convention | Yes |
| Madrid system | Yes |
| Multi class system | Yes |
| Documents required for filing a trade mark application | Name and address of the applicant, clear representation of the trademark, list of goods and/or services. |
| Prosecution process | Filing, publication, examination, registration, renewal |
| Registration term | 10 years from the date of application |
| Renewal term | 10 years |
Trademark search in Spain
A Trademark search can be done on the OEPM’s website at https://beta.oepm.es/es/marcas-y-nombres-comerciales/tramitar-una-solicitud-de-marca-o-nombre-comercial/que-hacer-antes-de-tramitar/busquedas-de-antecedentes-registrales-de-marcas/ on payment of prescribed fees.
Trademark Registration Procedure in Spain
The various stages involved in registration of a Trademark in Spain are:
- Submission of Trademark application
- Publication of application
- Presentation of oppositions and observations of third parties
- Background examination
- Test of use
- Grant or denial
Trademark Renewal in Spain
The duration of a trademark or trade name registration in Spain is 10 years from the date of filing of the application and can be renewed for successive periods of ten years.
An application for trademark renewal in Spain can be submitted in the six months prior to the expiration of the registration.
An opposition may be filed against an application within two months from the date of publication in the Official Gazette[1].
The Spanish Patent and Trademark Office (SPTO) will notify the Applicant regarding the opposition, who will have to file their response within one month of such notification. Thereafter, the SPTO will decide whether to grant or refuse registration, and will publish its decision in the Industrial Property Official Gazette.
An appeal may be filed against the SPTO’s decision through an administrative appeal procedure within one month of publication thereof[2].
[1] https://www.country-index.com/country_surveys.aspx?ID=28