Registering a trademark is essential to protecting the identity of your company, products, or services. This guide explains how to register your trademark in Spain, how to extend its protection in Europe or internationally, what can be registered, the legal implications of using it, and answers to the most common questions about protecting a trademark.
What is a trademark and what is it for?
A brand is a symbol that identifies a company's products or services and differentiates them from those of others. It can consist of words, images, logos, shapes, colors, or sounds.
Registering a trademark grants its owner the right to take legal action against third parties who use identical or similar signs in the same commercial field.
What can be registered as a trademark?
Any distinctive sign that can be registered allows to identify the business origin of a product or service. This includes:
- Words (names, names)
- Images, logos, shapes
- Letters, numbers, colors
- Sounds, movements or multimedia
- Combinations of the above
The sign must be distinctive, that is, it must be able to identify and differentiate the product or service from others on the market, without limiting itself to describing only its characteristics, qualities, or nature.
Can you register a trademark for everything?
No. To register a trademark it is necessary detail the products or services specific to which it will be applied, in accordance with the Nice Classification, which divides the activities into 45 classes.
Although the same trademark may be requested in several classes, protection is limited only to the indicated products or services, without extending to other categories not included in the registration, except for those renowned brands, whose protection may be extended to related products or services depending on their degree of recognition.
Can I use a trademark without registering it?
Although it is possible to use a trademark without having registered it, It is not advisable to do so without first checking the existence of previous records.. Use without registration does not grant exclusive rights, so if another person has previously registered the trademark, they could take legal action for infringement against the owner who uses an unregistered sign.
In Spain and the European Union, exclusive rights to a trademark are primarily acquired through registration. Therefore, to effectively protect your trademark and avoid legal risks, it is advisable to register it before beginning commercial use.
What happens if I register a trademark but don't use it?
Once registered, the trademark has a initial five-year period during which its use is not mandatory.
However, After this period, the owner must make effective and real use of the trademark to maintain its protection.. If it is not used continuously and as registered, a third party may request the expiration of the trademark due to lack of use.
Valid use is considered to include, among others:
- Actual market use, even with minor variations that do not affect distinctiveness.
- Use for products intended for export.
- Authorized use by third parties on behalf of the owner.
Furthermore, in opposition or nullity proceedings, Proof of use may be required to demonstrate effective use of the trademark..
What can I do if someone requests or uses a sign similar to mine?
If you detect that a third party uses a sign identical or similar to yours for products or services equal or related, you can take various legal actions, including:
- Send an extrajudicial request requesting cessation of use.
- Oppose to new registration applications that conflict with your trademark.
- Filing a trademark infringement lawsuit, by civil or criminal means depending on the severity.
- Request precautionary measures, the product recall and a Compensation for damages.
How to register a trademark in Spain?
Registering a trademark in Spain is an administrative procedure managed before the Spanish Patent and Trademark Office (SPTO). It is essential to do this with rigor and precision to avoid rejection by the OEPM, possible objections from third parties, or, where appropriate, nullity actions.
Pre-search for existing brands
Before applying for registration, it is recommended to make a search in the OEPM database to check whether there are identical or similar trademarks already registered, which could pose an obstacle to their registration.
Although this search may be conducted by the applicant themselves, it is recommended that the investigation be conducted by a specialized professional to prevent the trademark application from facing opposition from third parties due to conflict with a prior trademark.
Defining products or services: Nice Classification
Protecting a Brand it is not universal, but is limited to the products or services indicated in the application, according to the Nice Classification, which is divided into:
- 34 classes for products
- 11 classes for services
Selecting the classes correctly is fundamental: Registering a trademark in inappropriate classes may leave its true scope of exploitation unprotected and facilitate conflicts with third parties.
Prepare and submit the application
The application is submitted to the Spanish Patent and Trademark Office (OEPM) and must contain:
- Applicant details (name, NIF and address).
- Representation of the sign that you want to register (word, logo, image, etc.).
- List of products or services classified according to the Nice Classification.
- Proof of payment of the corresponding official rate.
An incomplete or incorrect application may result in delays, objections, or even denial of registration.
Formal examination of the application
After submitting the application, the OEPM carries out an admissibility and formal examination to check that the legal requirements are met:
- That all have been contributed mandatory data and documents.
- That application fee has been paid correctly.
- That the applicant is legitimized to register the trademark.
If the request is correct, it will admits for processing.
If you present formal defects, the OEPM grants a deadline to correct them; if they are not corrected in time, the request will be will be considered withdrawn.
Publication in the Official Gazette of Industrial Property (BOPI)
Once accepted for processing, the application is published in the BOPI (Spanish Official Gazette of the Spanish Autonomous Community). This publication serves two purposes:
- Notify interested third parties
- Start the two month term so that objections can be made.
Opposition period
During this period, holders of other prior trademarks may oppose registration if they consider that the new trademark infringes on their rights.
In that case, a adversarial procedure in which both parties present arguments and evidence.
If the application receives no objections, or if those submitted are rejected, the file will continue to be processed.
Trademark granting and publication
If there are no obstacles, the OEPM issues a resolution granting the trademark and publishes it as granted in the BOPI. From that moment on:
- The holder acquires the exclusive right of use on the sign in the designated classes.
- The trademark is protected for an initial period of 10 years in the Making, renewable indefinitely for equal periods.
Use and maintenance of the brand
Once granted, it is essential:
- Using the brand in the market within a period of five years.
- Renew it every 10 years (as long as the applicant is still interested).
- Monitor third-party requests to avoid conflicting records.
- Action against unauthorized uses (trademark infringement).
How to register a trademark in the European Union?
If you need to protect your trademark in several European countries, you can apply for a European Union Trademark (EUTM) to the EUIPO (EU Intellectual Property Office).
Advantages:
- Coverage: A single application grants protection in the 27 EU Member States.
- Centralized management: Both registration and renewal, oppositions or modifications are managed before a single organism.
- Strategic: It facilitates expansion in the countries of the European Union by avoiding country-by-country registrations, although any nullity or opposition affects the entire Union.
Can a “global” trademark be registered?
It is not a “global brand”, but the WIPO allow apply for protection in multiple countries with a single international application, simplifying procedures and costs.
Given that this is a very specific type of registration, it is advisable for the trademark owner, with professional advice, to assess the applicant's expansion plans, as well as the commercial interest in each country, to determine whether the WIPO route or national registrations in each territory are most appropriate for their protection strategy.
Main requirements:
- Having a core brand registered or applied for in Spain, the EU or another member country of the Madrid System.
- Designate the countries where protection is desired.
- Comply with the local regulations of each designated country, since each national office can accept or deny protection.
Advantage: You centralize the application and management of renewals, but the legal effects still depend on each country.
What is the difference between a trademark, a trade name, and a logo?
- Brand: sign that identifies and differentiates the products or services of a company from others.
- Tradename: name that identifies the company as such in the market.
- Logo: image or graphic design that can be registered as a figurative trademark or be part of a mixed trademark.
What types of trademarks can be registered?
The trademark registration system in Spain and the European Union allows for the protection of various types of distinctive signs, which are commonly classified as traditional and non-traditional trademarks, depending on the way they are represented.
Traditional brands:
These are the most common and are based on signs that can be perceived visually or read:
- Word marks: composed solely of words, letters or numbers, without any graphic elements or stylization.
- Figurative marks: consisting of graphic elements, logos or stylized designs, which may or may not include text with special typography.
- Mixed marks: combination of denominative and figurative elements.
Non-traditional brands:
These are signs that are not necessarily represented in a conventional visual form. Some examples are:
- Three-dimensional marks: specific shapes of the product or its packaging.
- Sound marks: sounds or combinations of sounds.
- Color markings: colors or color combinations without outlines.
The law requires that the representation of the trademark be clear, precise, complete, durable, and objective, so as to enable authorities and the public to accurately determine the scope of the protection granted.
Depending on the type of trademark, the representation may be graphic, audio, audiovisual, or digital, respecting the formats and technical requirements established by the Spanish Patent and Trademark Office (OEPM).
What happens after registering a trademark?
After the trademark is granted:
- You must use it in a real and continuous way.
- You can license or sell it.
- You have to renew it every 10 years.
- You can take action against third parties who infringe your rights.
- It is recommended to make a active surveillance of the market and new registration applications.
En elzaburu We have been advising companies, entrepreneurs, universities and public entities for over 160 years in the protection and defense of its distinctive signsOur specialized team supports you throughout the entire process: from trademark applications in Spain, Europe, or internationally, to monitoring, renewal, and defense in administrative or judicial proceedings.
Henry James, Lawyers and Technicians in the area of Partner Brands from Elzaburu.
