About LegalForce/Trademarkia
Trademarkia (LegalForce, Inc.), is one of the largest trademark search engines in the world. You can file and register your trademark in 170+ countries in the world through Trademarkia, including in the United States, China, Japan, the European Union, Korea, and many others. With the A La Carte Package, you follow step-by-step online legal form designed by world class global trademark attorneys at leading law firms; and LegalForce does the rest. It's easy and the protection lasts indefinitely in most countries.
It's easy and the protection lasts indefinitely in most countries
Trademarks are names, logos, or short slogans that help distinguish a good or service from other goods and services in a particular geographic area. Once a trademark is issued by a government agency, the protection lasts indefinitely in most countries – so long as you use your mark in commerce. Filing for Trademark Protection through LegalForce Trademarkia is easy! See why LegalForce is superior to other options >>
Automated reminders keeps you up to date
Trademarkia can also automatically provide you with reminders and keep you up to date of your status after you file your trademark application. Trademarkia's automated reminders help you so that you don’t have to deal with government bureaucracy or forget important dates.
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.