Overview of Spain Trademark Registration Service

Background

Spanish Trademark Law has been recently affected by the entry into force of the Trademark Act 1712001 of December 7, 2001, published in the Boletin Oficial del Estado (abbreviated BOE), i.e., the Official State Gazette, on December 8, 2001 and its implementing regulation 68712002 of July 12, 2002 (published in the BOE on July 13, 2002).

Who May Apply?

The first applicant is entitled to registration, and registration in accordance with the provisions of the law affords the applicant the right in the mark. Trademarks applied for in bad faith are subject to cancellation. Registration of marks may be obtained by natural or legal persons . of Spanish nationality and foreign natural or legal persons who habitually reside or have an effective and real industrial or commercial establishment on Spanish territory or who enjoy the benefits of the Paris Convention (see Appendix C1) and the WTO Treaty; and by foreign natural or legal persons not comprised in the foregoing, provided the state of which they are nationals allows natural or legal persons of Spanish nationality to register marks in accordance with the legislation of that country by virtue of the principle of reciprocity. The agent or representative of a proprietor of a trademark in other members of the Paris Convention or the WTO may not register this trademark in Spain without the express consent of the third party.

What Can Be Registered?

Marks may consist of words or combinations of words, including those that serve to identify persons; images, figures, symbols, and devices; letters, numerals and combinations thereof; three-dimensional forms, including wrappers, containers, the shape of a product, or its trade dress; sounds and any combinations of the signs mentioned above by way of example.

What Cannot Be Registered?

The following are not registrable: (1) marks that do not fit the definition of trademark (i.e., nonsusceptible of graphic representation or do not distinguish goods and services in the marketplace); (2) marks that are devoid of any distinctive character; (3) marks consisting exclusively of signs or of indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of the product or of the rendering of the service, or other characteristics of the goods or of the services; (4) marks consisting exclusively of signs or of indications that have become customary or usual to designate the goods or services in current language or in the bona fide and established practices of trade; (5) shapes that may be imposed by reasons of a technical order or by the nature of the goods themselves or that may affect their intrinsic value; (6) marks that are contrary to law, to public policy, or to accepted principles of morality; (7) marks that may lead the public to error, particularly as to the nature, quality, characteristics, or geographical origin of the goods or services; (8) trademarks for wines and spirits that contain or consist of a geographical indication identifying wines or spirits with respect to such wines or spirits not having that origin, even though they indicate the real origin, the translation of the geographical indication or terms like "style," "class," "type," "imitation," or analogous; (9) marks that reproduce or copy the name, coat-of-arms, flag, decorations, or other emblems of Spain, its autonomous communities, its municipalities, provinces, or other local entities, unless there is proper authorization; in any event, they may only be an accessory element of the principal distinctive sign; (10) marks that have not been authorized by the competent authorities and should be refused by virtue of article 6ter of the Act in force in Spain of the Paris Convention (see Appendix Cl); they may only be an accessory element of the principal distinctive sign; (11) marks that reproduce or copy the official warranty signs and hallmarks adopted by Spain or by any other state, unless there is proper authorization; (12) marks that are identical to earlier registered trademarks, registered trade names, or notorious unregistered trademarks (by virtue of the Paris Convention, see Appendix C1) to distinguish the same goods or services; this also applies to earlier trademark or trade name applications whether they are finally registered; (13) marks that, by reason of their similarity to earlier registered trademarks, registered trade names, or notorious unregistered trademarks and the similarity of the goods or services covered, may lead to confusion to consumers or give rise to a risk of association in the marketplace with the earlier sign; this also applies to earlier trademark or trade name applications whether they are finally registered; (14) marks whose use may suggest a connection or relation with earlier notorious or well-known registered trademarks or trade names, irrespective of the goods or services covered, or may misappropriate the reputation or dilute the notoriousness or well known character of the earlier sign; the protection of notorious or well known registered signs will be broader insofar the well known character achieved by the earlier sign; in this respect, the protection will reach all goods and services whether the earlier mark is generally well known; (15) marks that consist of the legal name or the image identifying a person other than the applicant for the mark, as well as the name, surname, pseudonym, or any other means that, for the public at large, may identify a person other than the applicant, unless there is proper consent; (16) signs that reproduce or imitate creations protected by copyrights or as an industrial property right, unless there is proper consent from the holder of those rights; and (17) the trade name or social name of a company that identify a person other than the applicant, where it could give rise to confusion as a result of their similarities and the similarity of products, and where the owner of those earlier signs proves their use and notoriousness in the whole territory. Marks that fall in the prohibitions set forth from (1) to (11) may not be registered or, if they are registered, may be cancelled. However, prohibitions (21, (31, and (4) do not apply to trademarks that have become distinctive (acquired "secondary meaning") in respect to the goods or services for which registration is requested as a consequence of such use. Also, the registration of such signs is permitted where they are combined in such a way that together they have distinctive character. Marks that fall within the prohibitions set forth in (12) through (17) may be ineligible even where there is no opposition by the owner of an earlier right or the use of the trademark is accepted for a five-year term.

Rights

The rights of third parties may be affected by others. A person who obtains a certificate of registration may oppose new trademark applications or may bring court actions against third parties who use in trade, without consent, an identical or similar mark or sign to designate identical or similar goods or services, when the resemblance of the signs and the similarity of the goods and services may lead to likelihood of confusion or risk of association.

Filing Requirements

Power of attorney in Spanish, simply signed (no legalization required). It may be granted as general or for each particular issue. The power must be filed within one month as of the notification of the appointment of the representative (that in most cases may coincide with the application date) or two months if the principal does not have a domicile or effective establishment within Spain. The representation is compulsory if there is no address or establishment within the EU. Certified copy of home application along with its translation in order to claim priority. The certified copy must be filed within three months as of the Spanish application filing date.

Evaluation & Review

The application must be filed in the competent office of the Autonomous Community (most of the 17 Spanish Autonomous Communities have appointed said offices) where the applicant or his representative is domiciled or has an effective establishment. This does not apply to applicants located in Ceuta, Melilla, or outside Spain, who file their applications directly before the SPTO. Applications may be also filed in any administrative entity but in such cases, no application date will be granted until reception by a competent office. Applications filed with the Postal Service offices will allow getting an application date when filed by open and certified mail with acknowledgement of receipt. Upon receiving applications, either the SPTO or the competent office will check the minimum formal requirements to grant an application date, payment of official fees, legitimization, and other formal requirements established in the law. The applicant is notified of any irregularities observed in the application so that he may remedy them within one month, or two months if the applicant's address is outside Spain. If the application meets the formal requirements established by law, it is sent to the SPTO, which analyzes it for compliance with the law, with public policy, and to accepted principles of morality. This exam will be made in accordance with formal requirements if the competent office is the SPTO. The SPTO makes in parallel a search of identical or similar prior applications and registrations and serves notice of the new application, before its publication, on the owners of the rights concerned, for prosecution purposes. The applications are published within two to six months from the application date depending on the circumstances. After publication, made at the Official Gazette, there is a two-month period for third parties to file oppositions based on earlier rights (who may invoke prohibitions (12) to (17)); for administrative entities or associations of manufacturers or consumers to submit observations and also for the examiner assigned by the SPTO to raise objections, both the observations and objections would be based on prohibitions (1) to (11)). The examiner also checks whether the application consists of the name of a person that the public at large may identify with a person other than the applicant. For further information, see 5 150:7. If there are no oppositions, observations, or objections to the application, registration will be granted within eight months from filing; otherwise, the proceeding is expected to take about 15 months until a resolution of granting or refusal. If oppositions or observations are filed or if any objections are raised by the SPTO, an official action is issued, served to the applicant and published in the Official Gazette, so that the applicant may submit his allegations within a term of one month as of the publication of the official action or the personal notification, whichever is applicable. In the reply to the official action the applicant may amend the mark, by restricting the goods or services applied for or deleting from the mark as a whole the element giving rise to the official action, provided such deletion does not substantially alter the mark as applied for; disclaim the element or elements that gave rise to the official action or split the application, continuing the proceeding for those classes that have not been affected by the official action. Upon expiration of the term established to reply to the official action, regardless of whether the interested party has contested it or not, the SPTO issues a resolution granting or rejecting the application, which is published in the Official Gazette. The proceeding may be stayed when the opposition is based on an earlier application, until it is registered; when the application is split, until it is resolved; when the applicant requests it because of having initiated a cancellation action or ownership claim against the opponent mark, until final and definitive ruling or at the joint request of the parties concerned, with a maximum term of six months.

Duration

Registration of a mark is granted for 10 years as of the application filing date. This term may also be renewed indefinitely, for further 10- year periods, provided the renewal fee is paid and the application for renewal, filed by the proprietor of the mark or his successors in title. The application for renewal must be filed and the fee paid during the six months prior to expiration of the registration. Failing this, it is still possible to renew within six months of expiration of the registration, subject to payment of a surcharge of 25% of the fee if the payment is made during the first three months and of 50% if it is made during the following three. This also applies to trade names.

Use

If no effective and genuine use is made of a trademark in Spain within a period of five years as of the date of publication of the grant thereof on the goods or services for which it was registered or if use is suspended for an uninterrupted period of five years, the mark is subject to the sanctions established in the law, unless there are reasons justifying nonuse (i.e., the request to have an official authorization to commercialize certain goods). The law does not define what is to be considered effective and genuine use. However, use generally means use in the actual marketing of the goods or services covered. The following are also considered use: (1) use of the mark in a manner differing in elements that do not significantly alter the form in which the mark is registered; and (2) use of the mark in Spain in relation to products or services solely intended for export. A mark is considered used by its proprietor when it is used by a third party with the former's express consent, but only for the products for which it has been effectively used.

Domain Names

No provision

Enforcement

Imported products bearing marks imitative of registered Spanish marks are subject to seizure. Importation of pharmaceutical specialties is not allowed unless specially registered with the Board of Health.