1. Why register a trademark?
For both commercial and protection reasons, trademarks should be registered. The risk of not registering a trademark is that others may register an identical or similar mark that could impede the ability to use or register the mark in Spain. Registration is prima facie evidence of ownership and validity. Registration can generate royalties through licensing.
2. Is registration of a mark mandatory?
Registration is not compulsory, but it is advisable. As discussed below, the legal benefits of registration may not be available otherwise. Furthermore, enforcement of an unregistered mark is much more difficult than enforcement of a registered mark.
3. What is registrable?
Any 搒ign?capable of distinguishing the goods or services of one undertaking from another (e.g., words, names, devices, certain three-dimensional shapes, colors, sounds) is registrable.
4. Can a trademark be registered for retail and like services?
Yes. Retail and like services are registrable at the Spanish Trademark Office and as Community Trade Marks.
5. How are domain names protected?
Domain names are protected by the registration of the domain name with the national domain name authority on a first come, first served basis. At the present time registration is possible in the second-level ".es" domain and in the third-level "com.es", "org.es", "nom.es", "gob.es", and "edu.es" domains. Second-level ".es" domain names must fulfill certain requirements and must be the same as the registrant entity's full name, a shortened version of the entity's name, or a trademark or tradename registered with the Spanish Patent and Trademark Office or a Community trademark registered with Community Trademark Office. Supporting trademarks are not required for third-level domain names.
6. Should a trademark be searched before filing?
If the mark is to be used in many countries, a prefiling search is recommended, at least in major countries, to avoid unnecessary costs entailed by adopting, developing, and filing a mark that has already been registered by someone else.
7. How do I file?
An applicant may file either via a home trademark attorney or by directly contacting a Spanish trademark attorney.
8. What information must be provided before filing?
Before filing, an applicant must provide one specimen of the mark unless the mark can be represented in plain block capital letters, full details of the applicant, a list of goods/services to be covered, and a power of attorney appointing a Spanish trademark attorney.
9. Is local registration the only option, or are there international alternatives?
A Spanish application only has effect in Spain. International registrations (under both the Madrid Agreement and Protocol) and Community registrations are also available (see Guides on the Madrid Agreement and Protocol and the Community Trade Mark.)
10. Is it necessary to file more than one application if a mark is used in more than one class of goods and/or services?
No. A single application may cover several classes of goods/services.
11. Is it possible to take advantage of a home application or registration?
If an applicant抯 home country is a member of the Paris Convention or, like Spain, is a member of the World Trade Organization, and provided its home application has been filed within the six months preceding a Spanish application, the filing date of the home application can be claimed as the filing date in Spain. An International registration can be based on a Spanish registration (see Guide on the Madrid Agreement and Protocol).
12. Must a trademark be used after registration, and what happens if a trademark is not used?
A trademark should be used within five years of publication of the notice of registration. If not, the registration will become vulnerable to cancellation for nonuse. However, late use after five years may cure nonuse, provided that in the interim no third party has filed an action for cancellation for nonuse.
13. Is using a variation of the trademark allowable?
If the difference is slight and does not alter the substance of the registration, use of the different form would not affect the enforceability of the applicant抯 registration. However, if the difference is significant, a new application may be necessary, because it is not possible to amend a registration. A Spanish trademark attorney should be consulted on this issue.
14. Is there any advantage to using a trademark before filing an application?
Only if the mark is well known in Spain, in which case it is possible to oppose or cancel subsequent marks and also to take action against any use made without proper consent.
15. For an application to be valid, are there any particular requirements that must be met?
No.
16. What information is first published about an application/ registration and when is it published?
Notice of the application is published approximately two to three months after filing so that any interested third party may file an opposition. The notice contains the main particulars of the applicant and of its representative, the number assigned to the trademark, the filing date, a reproduction of the mark, and the specification of goods/services claimed.
17. What kind of examination (if any) will a new application undergo?
An application is examined to determine if the mark complies with local rules as to distinctiveness and deceptiveness.
18. What response to official objections is required?
An applicant is entitled to reply within one month of publication of the official action. This term is not extendible, although arguments or essential documents (such as letters of consent) are usually admitted before a decision is given on the application. It is also possible to suspend the prosecution of the mark for a period of up to six months, provided that all of the interested parties agree to do so.
19. How long is the registration process?
The registration process takes approximately 6 to 8 months if no obstacles are encountered and 10 to 12 months in the event that obstacles are indeed encountered.
20. What rights does an application confer?
The application can be used to oppose a subsequent conflicting application. Additionally, an application confers provisional protection in the form of a right to claim reasonable compensation from third parties who commit infringement.
21. What is the legal effect of a registration?
The registrant can sue for infringement and can oppose and cancel subsequent registrations and applications. It is also possible to apply for precautionary measures and seize counterfeits at customs.
22. Can an application be opposed or cancelled by third parties?
Yes. There is a nonextendible two-month period from the date of publication within which oppositions may be lodged by third parties.
23. Can an application or registration be assigned?
Yes.
24. Must an assignment include goodwill?
No. The assignment may be either with or without goodwill.
25. Does an assignment have to be recorded?
Recordation is not compulsory, but it does entitle the assignee to invoke the rights arising from the registration against third parties acting in good faith.
26. Can an application or registration be licensed?
Yes. Consult a Spanish trademark attorney.
27. Does a license have to be recorded?
Recordation of licenses is not compulsory, although if recordation is not carried out, licenses shall not be effective vis-a-vis third parties acting in good faith.
28. What is the territorial limit of a registration?
The territorial jurisdiction is the entire national territory of Spain, which comprises the mainland, the Balearic Islands, the Canary Islands, and the cities of Ceuta and Melilla. The only advantage for other countries is that it is possible to use the registration as the basis for an application under the Madrid Agreement and Protocol (see Guide on the Madrid Agreement and Protocol).
29. How long does a registration last?
The term of registration is ten years from the filing date, and is renewable for like periods. However, in the case of some trademarks granted under earlier legislation, taxes must provisionally be paid every five years to keep the registration in force.
30. What is required to renew a registration?
A renewal application containing the particulars of the applicant, the trademark, the specification of goods/services and payment of the renewal fee are required.
31. Is it necessary to indicate a trademark registration on goods or services?
No. Marking is optional.
32. Does the International Classification System apply?
Yes.
33. Is your national office accessible online?
Yes, at www.oepm.es. |
