TRADEMARK REGISTRATION IN SPAIN

Trademark registration in Spain right now

The term “trademark” means any sign through which goods or services can be distinguished from other similar or other similar of the same type. In this context, we can glimpse the importance of the brand in the commercial field, since the public and consumers will know and distinguish the quality of this product or service through the brand that designates them.

The brand, being an intangible asset of natural and legal persons, has an incalculable value that in many situations greatly exceeds the product or service offered. In addition, it conveys trust and ensures that consumers can choose your brand over another.

The legislation in Spain benefits the first to file, which is why in order to obtain their protection, trademarks must absolutely be filed locally. In certain circumstances, well-known marks may be protected even if they have not yet been registered. Trademark registrations are made with the Spanish Patent and Trademark Office (OEPM).

Spain is also a member of the European Union, which means that trademark protection can also be obtained by filing a European Union Trademark, and a signatory country to the Madrid Protocol, which means, l Extension of an international trademark through the Madrid system is possible in this country.

Trademarks registered in Spain provide protection in the Canary Islands, Ceuta and Melilla.

It is not necessary for the trademark to be used in order to obtain registration. However, prior use can be useful, since it can help overcome an objection raised for lack of distinctiveness, by demonstrating that the mark has acquired distinctiveness. To do this, the use of the mark must be considerable.

There are brands with an international reputation that promote empathy and quality assurance, but it is necessary to approve that this is not an exclusive process of the big brands. Companies, start-ups and even individuals must also take into account the registration of their trademarks.

The risk of not registering a trademark is that this trademark can be used by another company, person or entrepreneur. As a result, this may incur risks unknown to us. Among them, we can highlight the following:

Loss of investments made so far.
Loss of reputation and positioning achieved.
Problems and difficulties for the sale of an activity.
Economic and criminal risk of ignorance of the use of the brand by a third party.

To prevent these risks from happening, if you are working in a project or setting up a company, it is recommended that you first register your trademark.

If you file a combined mark (which includes both word and figurative elements) in Spain, the exclusive right to use that mark will be limited to its use in the exact configuration in which it was filed. If you wish to use the word element of your mark separately from the logo (and vice versa), it is advisable to file another mark including only the word elements or only the figurative elements that you wish to use and protect separately.

However, if a third party intends to register or use a mark for similar goods or services and which includes a main or distinctive part of your mark, you will have the right to oppose the application for registration on the basis of a confusing similarity. Oppositions may be presented by third parties against a trademark application within two months from its publication in the Spanish Bulletin of Intellectual Property. The chances of success of an opposition vary according to each specific case.

Although it is not necessary to use a mark in Spain to obtain the deposit, if it is not used for a period exceeding five years, requests for cancellation may be presented by third parties on the basis of a lack of use. In order to remedy this defect, the use of the mark must be commercial.

The term of validity of a trademark registered in Spain is ten years from the date of the filing application. The mark can then be renewed indefinitely for periods of 10 years. The renewal request can be made during the six months preceding the expiry date of the mark as well as during the grace period of six months following it, subject to the payment of additional fees.

How do I register a trademark in Spain

You can start your trademark registration in Spain directly through the Spanish Patent and Trademark Office (Oficina Espanola de Patentes y Marcas). Such a deposit is valid for Spanish territory only.

Unlike a number of countries, during the process of trademark registration in Spain for foreigners the use of a local lawyer is not mandatory. On the other hand, it is obvious that a very good command of Spanish is necessary given the complexity of the information to be completed.

The application steps are as follows:

Examination - Elements of the application such as compliance with trademark requirements, classes of goods or services, clarity of description and whether it is misleading are analyzed.
Filing - After the trademark office examines the mark and there are no grounds for refusal, a certificate of filing is issued to the applicant.
Publication - The trademark is then published in the Trademark Bulletin. Details of the filing will be published and made available to the public. The publication phase allows third parties to verify the recently registered trademark and submit a complaint or opposition if necessary.

Is it possible to claim the right of priority in Spain?

Yes, the filing date in your home country may be considered the filing date in that jurisdiction if:

Your home country is a member of the Paris Convention;
The application date in your home country is within 6 months of the application date in that country.
Your country is a member of the World Trade Organization (WTO).

To be eligible for registration, the sign must be capable of representation. Most often, it is a denomination or a figurative sign but it can also be a sound sign.

In order to be registered, the mark must be lawful. Thus, marks contrary to public order or morality are prohibited.
The mark must not be deceptive, i.e. it must not be misleading as to the characteristics or qualities of the product
The mark must then be distinctive, i.e. it must not be descriptive of the product or be the term commonly used to designate a product or service.
It must be available, i.e. it must not infringe prior rights: trademarks, copyrights, denomination or company name, etc.

Finally, the brand is subject to the principle of specialty. This means that it is only protected for the category of goods or services designated during registration.

Trademark registration in Spain: guidelines

If you want to obtain more extensive protection for your trademark, you can register a Community trademark. You can complete the trademark registration entirely online on the website of the European Union Intellectual Property Office (EUIPO); in English, French or Spanish. Your brand will then be protected in all countries of the European Union. The protection also lasts for 10 years.

The basic fee covers one class and costs €850. The tax for second class is 50€. It is then necessary to count 150€ for each additional class. It is therefore a very economical solution given the territorial scope of the protection (the European Union represents a market of nearly 500 million consumers).

You can also register an international trademark. Registering a trademark in several countries can be very complicated. Indeed, you must multiply the steps with each national filing office and pay the corresponding fees. In addition, it is very often necessary to hire a local lawyer.

The Madrid System was created to facilitate filing procedures in foreign countries. It is possible to file a trademark in all members of the Madrid Union through a single procedure. The form is available in English, Spanish and French. You must have already registered your trademark at the national level.

You will have to pay a basic trademark registration fee in Spain (between approximately €600 and €800) as well as a variable additional fee depending on the countries where you want to file a trademark and the number of classes you want to protect. This solution is often more advantageous economically when you want to make a deposit in several countries.

To get an idea of the total cost of filing, you can run a simulation on the WIPO Fee Calculator.

What are the trademark registration requirements in Spain?

As for a filing in Spain your trademark must be:

Lawful: In general, this means that your trademark must not infringe the public order of the country where you wish to register your trademark. There are also special rules to be observed, for example the rules concerning controlled designations of origin.
Distinctive: Your mark should distinguish your particular product or service from other similar products or services. It is therefore impossible to simply describe the product in question. For example, you cannot register the brand name "Cup" if you wish to market cups or more generally tableware. This is too generic a name.
Available: Prior to your trademark registration, you must check that the trademark you have chosen is not already used by someone else. To find out, you must carry out a prior art search, i.e. check that an identical or similar sign is not already protected. It is often preferable to hire a professional to carry out the trademark registration search in Spain.

Trademark registration in Spain: renewal

Your brand is protected for 10 years. You must renew it before this period expires.

Trademark registration in Spain: cost

The price of registration varies according to the number of classes requested. The initial deposit price is €125.36. Each additional class costs an additional €81.21. This can be a good solution if you want to register a trademark only in Spain. If the Spanish market is enough for you, this solution is the cheapest. On the other hand, if you want to further extend the protection of your mark, it is better to consider the other options.

Country	Comprehensive review	Registration service	Registration certificate	Total
Trademark registration in Spain	1st class, Word mark or logo 54 EUR	1st class, Word mark or logo 375 EUR	1st class, Word mark or logo No data	1st class, Word mark or logo 429 EUR
	Additional class, Word mark or logo 54 EUR	Additional class, Word mark or logo 224 EUR	Additional class, Word mark or logo No data	Additional class, Word mark or logo 278 EUR
	1st class, Word mark or logo 221 EUR	1st class, Word mark or logo No data	1st class, Word mark or logo No data	1st class, Word mark or logo 221 EUR
	Additional class, Word mark or logo 221 EUR	Additional class, Word mark or logo No data	Additional class, Word mark or logo No data	Additional class, Word mark or logo 221 EUR

Conclusion

In order to obtain trademark protection in Spain, you can register your trademark in two ways: The first option is to make a single application for registration in the European Union; this is done through the European Union Trademark Office, which grants protection in all 27 European Union member countries.