2.1 What is a trademark?
A trademark is an exclusive right in a distinctive sign the main function of which is to distinguish the goods and services of one undertaking from those of its competitors. It also plays an important role in advertising and goodwill consolidation.
2.2 What factors need to be borne in mind to register a trademark in Spain?
- That it is free to be used.
- That it is free to be registered.
- That it has no negative connotations, i.e. it is commercially suitable.
Before marketing goods or services, it is advisable to verify that no identical or similar mark has been registered previously for identical or similar goods or services, since this could prevent the use of the sign in the relevant territory.
After confirming that no prior third-party rights are being infringed, one of the various procedures for obtaining registration should be chosen in order to secure exclusive rights and prevent the mark from being used by other companies. Obtaining registration also involves assessing that the mark is not generic, deceptive, descriptive or contrary to public policy or accepted principles of morality.
2.3 What are the ways of registering a mark in Spain?
- National system.
- International system: Madrid Agreement / Madrid Protocol.
- European Union Trademark.
2.4 How do you obtain a Spanish trademark?
By filing an application at the Spanish Patents and Trademarks Office (OEPM).
The application process takes approximately between 8 and 15 months.
Spanish trademarks may consist of words, names or surnames, signatures, numbers and number combinations, slogans, drawings, sounds, colors and three-dimensional shapes, including packaging.
2.5 What checks does the OEPM mark when it receives the application?
The OEPM only examines ex officio whether the trademark falls within absolute grounds for refusal mainly, that the mark is not generic, misleading, descriptive or contrary to public policy), but does not carry out an examination of relative grounds for refusal, that is, the existence of identical or similar earlier marks registered for identical or similar goods, likely to be confused with the new trademark. Relative grounds for refusal are only examined where the owners of prior marks file an opposition against the trademark application.
In short, the OEPM will not refuse trademarks ex officio based on relative grounds, and instead performs a computer search to notify the holders of prior identical or similar signs, for informative purposes only, of the application, in case they are interested in filing an opposition.
2.6 How long does Spanish trademark registration last?
Trademark registration is valid for 10 years and can be renewed indefinitely for further ten-year periods. However the registration may lapse or be revoked if the trademark is not renewed, if it is not effectively used during an uninterrupted 5-year period, or if it becomes generic or deceptive in connection with the goods and/or services it covers.
2.7 What is an international trademark?
An international trademark is linked to the Madrid system for the international registration of trademarks “Madrid System”, comprising the Madrid Agreement of 1891 and the Madrid Protocol of 1989, and administered by the World Intellectual Property Organization (OMPI), with headquarters in Geneva.
Although known as “international trademarks”, this is not strictly speaking the case since the Madrid system unifies administrative procedures at one sole national office, enabling various national registrations to be obtained, but does not offer protection worldwide.
2.8 How do you obtain an international trademark?
The applicant must designate the countries where it wishes to obtain protection from among those countries that have ratified either the Agreement or the Protocol. WIPO subsequently proceeds to notify the national Offices of the designated countries and if no oppositions are filed pursuant to the national laws of each of the countries concerned within one year (pursuant to the Agreement) or 18 months (pursuant to the Protocol), the international trademark will be registered.
Since April 1, 2004 international trademark applications filed under the Madrid system for the international registration of marks may be processed in Spanish.
The application process usually takes between 12 and 20 months.
2.9 Who can file an international trademark?
International trademarks can only be filed by natural or legal persons who have ties to a State that is party to one or both of the treaties (due to nationality, domicile, or real and effective establishment) and may, on the basis of an application filed at the Trademark Office of such State, obtain an international registration effective in all or some of the countries of the Madrid Union.
2.10 What is an EU trademark2?
A EU trademark confers its proprietor the right to prevent unauthorized use of the trademark by third parties throughout the entire European Union, as well as the use of identical or similar signs that could generate a likelihood of confusion among consumers.
Therefore, an undertaking that seeks to market its products or provide its services in Europe, does not have to file an application in each EU Member State, but rather is able to obtain one sole EU registration that automatically gives it exclusive rights in all of them.
Another important advantage of the EU trademark is that no evidence of use is required to obtain registration, and use of a mark in any one Member State is sufficient to maintain its validity.
The EU trademark does not replace trademark rights in each Member State. The national, international and EU trademark systems coexist and, in some cases, complement each other.
EU trademark infringement actions are brought before EU trademark courts, which are national courts designated by each of the Member States.
2.11 Who can file an EU trademark?
Any person domiciled or with an establishment in the European Union or in a country which is a party to the Paris Convention, or domiciled in a member state of the World Trade Organization.
2.12 How do you obtain an EUtrademark?
The EU trademark is administered by the European Union Intellectual Property Office (EUIPO), which is based in Alicante, Spain. The application may be submitted in any of the official languages of the European Union, although the applicant is required to designate a second language out of the EUIPO’s five official languages, (German, Spanish, English, Italian and French) which may be used as the language of opposition, revocation or invalidity proceedings.
The application process takes approximately 7 months if there are no oppositions.
2.13 What checks does the EUIPO make when it receives the application?
The EUIPO only examines marks on absolute grounds for refusal (i.e. it mainly verifies that the mark is not descriptive, generic or deceptive in any of the European Union countries).
However, it does not examine applications ex-officio on relative grounds for refusal, i.e. it will not refuse registration on account of the existence of any earlier trademark registrations in the European Union), but rather it is up to the owners of these registrations to file an opposition against such marks at the EUIPO.
2.14 EU trademark… and international?
The European Union’s accession to the Madrid Protocol connects the registration procedure of an EU trademark application to the International trademark registration system. Thus, any person based in an EU State may file an application at the EUIPO not just to protect his mark as an EU trademark but also as an international trademark in the Member States of the Madrid Protocol.
2.15 How long does an EU trademark last?
10 years. This period can be renewed for further 10-year periods subject to payment of the appropriate fees.
2.16 What is the reform of the trademark system in the EU?
As from October 1, 2017, the date on which Regulation no. 2015/2424 enters into force, the Office for Harmonization in the Internal Market (OHIM) will be called the European Union Intellectual Property Office (EUIPO), and the Community trademark will be called the European Union trademark.
Some of the most important changes introduced by the Regulation are as follows:
- An EU trademark application may only be filed at the EUIPO, and not at the industrial property offices of the Member States.
- The requirement of graphic representability of the mark is eliminated.
- A specific fee for each class designated is established.
- Uniform criteria will be adopted for the classification of the goods and services designated by the trademark.
2 Previously designated as Community Trademark.