Why and how to register a trademark in Spain

In Spain, trademark registration is mandatory to be granted rights over a trademark, as it is a "first to file" jurisdiction. Only in some exceptional cases can an unregistered trademark be protected. The trademark applications must be filed with the Spanish Patent and Trademark Office (OEPM).

Spain is also a member of the European Union, therefore European Union Trademarks (EUTM) are protected in this jurisdiction. It is also a member state to the Madrid Protocol. Thus, the extension of an international registration of a trademark via the Madrid System is possible for this country. For further information regarding our services for trademark filing through the Madrid System click here.

A trademark registered in Spain grants protection in Canary Islands, Ceuta and Melilla.

It is not necessary for a trademark to be in use in Spain in order for it to register. However, prior use may be useful as it can help overcome an objection raised on the grounds of lack of distinctiveness, by proving that the trademark has acquired distinctiveness. Such use must be extensive in order to demonstrate acquired distinctiveness.

If you register a combined trademark (which includes both word elements and figurative elements) in Spain, the exclusive right to use the trademark is limited to a use of the trademark in the exact configuration or way in which it was filed and registered. If you wish to use the word element of your trademark separately from the logo (or vice versa), it is recommended you register for another trademark including only the word or figurative elements you wish to use and protect separately.

Nevertheless, if a third party eventually intends to register or use a trademark for similar goods or services that includes a primary or distinct part or portion of your trademark, you will have the right to oppose the application based on confusing similarity.

Opposition actions may be filed by interested third parties against a trademark application within a period of two (2) months following its publication in the Spanish Industrial Property Bulletin. The probabilities of success for an opposition will vary in each case depending on the circumstances.

Although a trademark does not have to be in use in order for it to register, it must not go unused for periods of five years or it will become vulnerable to cancellation actions based on lack of use of the trademark. To prevent this, the amount of use of the trademark must be on a commercial scale.

Registered trademarks in Spain have a validity of ten (10) years from the application date and can be renewed indefinitely for further periods of ten (10) years. The trademark renewal can be requested as early as six (6) months before the expiration date. It can also be requested during the grace period of six (6) months after expiration, upon payment of a late renewal fee.

 

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