Registering a trademark is essential for protecting the identity of your company, your products, or your services. This guide explains how to register your trademark in Spain, how to extend its protection throughout Europe or internationally, what can be registered, the legal implications of using a trademark, and answers to the most common questions about trademark protection.
What is a trademark, and what is it used for?
A trademark is a symbol that identifies a company's products or services and distinguishes them from those of other companies. 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 marks in the same commercial field.
What can be registered as a trademark?
Any distinctive sign that identifies the business origin of a product or service may be registered. This includes:
- Words (terms, names)
- Images, logos, shapes
- Letters, numbers, colors
- Sounds, movements, or multimedia
- Combinations of the above
The mark must be distinctive; that is, it must be capable of identifying and distinguishing the product or service from others on the market, without merely describing its characteristics, qualities, or nature.
Can you register a trademark for anything?
No. To register a trademark, you must specify the specific goods or services to which it will apply, in accordance with the Nice Classification, which divides activities into 45 classes.
Although a single trademark may be registered in multiple classes, protection is limited solely to the specified goods or services and does not extend to other categories not included in the registration, except for well-known trademarks, whose protection may extend to related goods 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 registering it, it is not advisable to do so without first checking for prior registrations. Use without registration does not confer exclusive rights; therefore, if another person has previously registered the trademark, that person could take legal action for infringement against the owner using an unregistered mark.
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 an initial term of five years during which its use is not mandatory.
However, once this period has elapsed, the owner must make effective and genuine use of the trademark to maintain its protection. If the trademark is not used continuously and in accordance with the registration, a third party may request that the trademark be revoked for lack of use.
Valid uses include, among others:
- Actual use in the marketplace, even with minor variations that do not affect distinctiveness.
- Use for products intended for export.
- Use authorized by third parties on behalf of the owner.
In addition, in opposition or invalidation proceedings, it may be necessary to submit evidence of use to prove the actual use of the trademark.
What can I do if someone applies for or uses a trademark similar to mine?
If you discover that a third party is using a mark that is identical or similar to yours for the same or related goods or services, you can take various legal actions, including:
- Send an out-of-court demand requesting that the use cease.
- Object to new registration applications that conflict with your trademark.
- File a lawsuit for trademark infringement, either in civil or criminal court, depending on the severity of the case.
- Request injunctive relief, a product recall, and compensation for damages.
How do you register a trademark in Spain?
Registering a trademark in Spain is an administrative process handled by the Spanish Patent and Trademark Office (OEPM). It is essential to carry out this process with rigor and precision to avoid rejections by the OEPM, potential oppositions from third parties, or invalidation proceedings, if applicable.
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Preliminary Search for Existing Trademarks
Before applying for registration, it is recommended that you search the OEPM database to check whether there are any identical or similar trademarks already registered that could pose an obstacle to your registration.
Although the applicant may be able to conduct this search on their own, it is recommended that the search be carried out by a specialized professional to prevent the trademark application from facing oppositions from third parties due to a conflict with a prior trademark.
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Defining the goods or services: Nice Classification
Trademark protection is not universal; rather, it is limited to the goods or services specified in the application, in accordance with the Nice Classification, which is divided into:
- 34 product categories
- 11 categories for services
Choosing the correct classes is essential: registering a trademark in inappropriate classes may leave its actual scope of use unprotected and lead to disputes with third parties.
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Prepare and submit the application
The application is filed with the Spanish Patent and Trademark Office (OEPM) and must include:
- Applicant's information (name, tax ID number, and address).
- A representation of the mark to be registered (word, logo, image, etc.).
- List of products or services classified according to the Nice Classification.
- Proof of payment of the corresponding official fee.
An incomplete or incorrect application may result in delays, objections, or even denial of registration.
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Formal Review of the Application
After the application is filed, the OEPM conducts an admissibility and formal review to verify that the legal requirements are met:
- That all required information and documents have been provided.
- That the application fee has been paid in full.
- That the applicant has standing to register the trademark.
If the application is in order, it will be accepted for processing.
If the application contains formal defects, the Spanish Patent and Trademark Office (OEPM) grants a period of time to correct them; if they are not corrected within that time, the application will be deemed withdrawn.
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Publication in the Official Industrial Property Bulletin (BOPI)
Once the application has been accepted for processing, it is published in the BOPI. This publication serves two purposes:
- Notify interested third parties
- Begin the two-month period during which objections may be filed.
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Civil Service Exam Period
During this period, owners of other earlier trademarks may oppose the registration if they believe that the new trademark infringes on their rights.
In that case, an adversarial proceeding is initiated in which both parties present arguments and evidence.
If no objections are filed against the application, or if any objections filed are dismissed, the case will proceed to the next stage.
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Trademark Registration and Publication
If there are no obstacles, the OEPM issues a decision granting the trademark and publishes it as granted in the BOPI. From that point on:
- The registrant acquires the exclusive right to use the mark in the designated classes.
- The trademark is protected for an initial period of 10 years, renewable indefinitely for equal periods.
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Brand Use and Maintenance
Once granted, it is essential to:
- Use the trademark in the marketplace within five years.
- Renew it every 10 years ( as long as the applicant remains interested).
- Monitor third-party applications to prevent conflicting registrations.
- Take action against unauthorized use (trademark infringement).
How do I 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) with the EUIPO (EU Intellectual Property Office).
Advantages:
- Coverage: A single application provides protection in all 27 EU member states.
- Centralized management: Registration, renewal, competitive examinations, and modifications are all handled by a single agency.
- Strategic: It facilitates expansion into European Union countries by eliminating the need for country-by-country registrations, although any invalidation or opposition affects the entire Union.
Can you register a “global” trademark?
It is not a “global trademark,” but WIPO allows you to seek protection in multiple countries through a single international application, thereby simplifying the process and reducing costs.
Given that this is a very specific type of registration, the trademark owner should, with professional advice, evaluate the applicant’s expansion plans as well as the commercial interest in each country to determine whether the best approach for their protection strategy is to opt for the WIPO route or for national registrations in each territory.
Key Requirements:
- Have a trademark that is registered or pending registration in Spain, the EU, or another member country of the Madrid System.
- Specify the countries where you wish to obtain protection.
- Comply with the local regulations of each designated country, as each national office may grant or deny protection.
Advantage: You centralize the application and management of renewals, but the legal effects continue to depend on each country.
What is the difference between a trademark, a trade name, and a logo?
- Trademark: a symbol that identifies and distinguishes a company's products or services from those of others.
- Trade name: the name that identifies the company as such in the market.
- Logo: an image or graphic design that can be registered as a figurative trademark or form part of a combined 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 how they are represented.
Traditional brands:
These are the most common and are based on signs that can be seen or read:
- Word marks: consisting solely of words, letters, or numbers, without any graphic elements or stylization.
- Figurative trademarks: consisting of graphic elements, logos, or stylized designs, which may or may not include text in a special typeface.
- Mixed trademarks: a combination of word and figurative elements.
Non-traditional brands:
These are symbols that are not necessarily represented in a conventional visual way. Some examples include:
- Three-dimensional trademarks: specific shapes of the product or its packaging.
- Sound marks: sounds or combinations of sounds.
- Color marks: colors or combinations of colors without outlines.
The law requires that the representation of the trademark be clear, precise, complete, durable, and objective, so that the authorities and the public can determine exactly the scope of the protection granted.
Depending on the type of trademark, the representation may be graphic, auditory, audiovisual, or in the form of digital files, in accordance with the formats and technical requirements established by the Spanish Patent and Trademark Office (OEPM).
What happens after a trademark is registered?
After the trademark is granted:
- You must use it consistently and in real life.
- You can license it or sell it.
- You have to renew it every 10 years.
- You can take action against third parties who infringe on your rights.
- It is advisable to actively monitor the market and new registration applications.
At Elzaburu, we have been advising companies, entrepreneurs, universities, and public entities on the protection and defense of their distinctive marks for over 160 years. Our specialized team guides you through the entire process: from filing a trademark application in Spain, Europe, or internationally, to monitoring, renewing, and defending your trademark through administrative or judicial proceedings.
Enrique Jacobo, Attorneys and Specialists in the Trademark Department at Elzaburu.