Is there a time frame for the trademark registration approval?
The average time frame for the registration approval is 8 months, if no objections or oppositions arise.
Do I need to sign a Power of Attorney?
Yes. A power of attorney is necessary to complete the application.
Are there any benefits from a pre-filing use of the trademark?
Yes, there are benefits. First, it will enable the owner to establish distinctiveness of the mark. Second, the owner can use this distinctiveness to win cases filed by third-parties on the basis of non-distinctiveness.
Will there be problems in case I don’t use my trademark after registration?
Yes. Non-use of the registered mark can be a valid ground for the registration to be cancelled.
What are the types of trademark that can be registered in Spain?
Signs that can be replicated graphically and have the capability of making a product distinct are registrable: names, words, sounds, slogans, trade dress-up, devices, 3-dimensional shapes, and colors. Colors can be registered provided these are interpreted in a specific shape and it’s not too simple. Colors must also be identified in Pantone shades.
What are the phases of application after a trademark has been filed in Spain?
The application process goes through several phases. It starts with online publication of information such as name of applicant, date and number of application, product/service, the mark, etc. Once the application was published, it will be examined by the registration officers. They will validate if the application is compliant to all requirements. Opposition period is also granted to third-parties before the mark can be officially registered.
What type of trademark is non-registrable?
The law prohibits the registration of the following marks:
- Marks that pose a threat to public order
- Scandalous or immoral marks
- Generic terms
- Symbols and flags of nations, states, regions
- Symbols and flags of international organization
- Marks that are lacking in distinctiveness
- Marks that are known as geographical location
Does Spain use the "Nice Classification" system?
Yes. Nice Classification is effective in the jurisdiction of Spain. Only one application is needed for trademarks that cover multiple classes of products/services.
Does the Community Trademark apply for Spain?
Yes. European Union Trade Mark (new name for Community Trademark) registration system is effective in Spain.
Is there any possibility to claim priority in Spain?
Yes. If the application’s country of origin is a Paris Convention signatory, the first filing date can be claimed as the filing date in Spain provided the application occurred within the past 6 months. It is also possible to claim priority registration if the home country of the applicant is a WTO (World Trade Organization) member.
What do I need to do to satisfy the use requirement?
You must use the trademark for commercial purposes within 5 years from the date it was registered. The commercial use must be performed within the jurisdiction of Spain.
Once my trademark has been registered, for how many years will be valid?
The validity of the initial registration is 10 years. The beginning of the term is computed from the date of application.
What will be the renewal date of my trademark?
Count 10 years from the date the application was filed.
Is it legal to use my trademark even if it is not yet registered?
Using an unregistered trademark for tobacco products is illegal.
Does having a registered trademark in Spain afford me any right?
The “first to file” jurisdiction applies in Spain. It is mandatory to go through the processes of trademark registration in order to obtain rights. Famous but unregistered marks are an exception to the rule. Even if these well-known marks are not registered, their owners have the right to bring cancellation of registration to any mark that has a big resemblance to their famous marks.
What is the web address of the trademark national office?
Is there any need to use my trademark before I apply for registration?
No. Applicants are not obliged to use the trademark before registration. Intent to use the mark is also not mandatory.
What are the grounds for a Trademark Application to be opposed?
The following reasons are grounds for opposition to be granted:
- A similar mark was registered earlier
- The mark is a description of the product’s intended purpose, value or other characteristics
- It is difficult to see the distinctiveness of the mark
- Breach of copy
- The mark violated the rights of famous marks
- Violation of Article 6septies or Article 8 of the Paris Convention
- Unauthorized use of protected emblems, flags and insignia
Who can contest my trademark registration?
Any interested or aggrieved party, a licensee, or a legit owner of a mark that was registered earlier can oppose the registration.
Is it possible to cancel a registration?
Yes. Registered trademarks can be cancelled if these are registered in bad faith. Cancellation is also possible if the mark was proven to be non-registrable. For example, it includes a protected badge or emblem of a state, it is not distinct, it is disparaging, etc.
Are there any rights established by having a registered trademark?
Yes. Certain rights are established by registration namely:
- Right to use the mark exclusively
- Right to oppose and cancel later applications that are in conflict with the registered mark
- Right to file infringement cases against third-parties that use similar marks, and obtain financial damage for it
- Right to issue license to third-parties to utilize the mark
- Right to request for seizure of fake goods
How long is the opposition period?
Two months beginning on the date the application was published, and extension will not be granted.
Is Spain a member of the Madrid System?
Yes. Spain is a signatory of international treaties Madrid Protocol and Madrid Agreement.
Do I need to present periodic statement of use?
It is not required to submit period statements of use.
When should I renew my trademark?
Renew your trademark every 10th anniversary of the filing of application date.
What will be the renewal date of my trademark?
Count 10 years from the date the application was filed.
Is there any documentation that should be presented when renewing a trademark?
None. There is no need to present any document when renewing your trademark.
If my trademark expires, do I have a grace period?
After the expiration date of the trademark, you have 6 months to renew it.
What is a trademark?
A trademark identifies products and services in order to distinguish them in the market. The name, the verbal element, is not the only component that distinguishes a trademark; figurative elements such as logos, design, images, colors and sounds also create an identity that can be protected through trademark registration.
With the registration, the owner (person or company) becomes the owner of the trademark. The registration is given for a particular country/territory, for certain products or services and for a specific term. While the registration is in force, only the owner may use the trademark in the market where the trademark is registered.
Some symbols to consider:
® Means the trademark is registered.
TM Some countries use this symbol to show that the trademark has been filed at the trademarks office and is still undergoing the registration process.
SM Some countries use this symbol to show that the service mark has been filed at the trademarks office and is still undergoing the registration process.
What is the difference between a trademark, patent and copyright ?
There are many ways to lay claim to your work. Trademarks, patents, and copyrights offer protection for owners of intellectual property. A trademark helps people find your goods and services. When recognized as a registered mark, it protects your right to exclusively use the image, logo, phrases, or words to distinguish your goods or a service in the market.
A patent safeguards ideas and inventions. It gives a creator or inventor exclusive rights that prevent other people from making, using, or profiting in any way from an invention or creative innovation without the consent of the inventor.
You cannot patent an idea because we all have them. You must materialize your concept into a tangible invention, innovative product, device, or process that offers new solutions to a problem to secure a patent.
Copyright protect published, performed, or printed creative works. People who produce artistic or musical work seek to protect their “right” to stop others from “copying” what they do. Copyright protection protects any original creative works of authors including:
- a) artwork (2 or 3 dimensional),
- b) photographs, graphic drawings, and designs as well as other forms of creativity;
- c) songs, music, and sound recordings of all kinds;
- d) books, manuscripts, publications, and another written work; and
- e) plays, movies, shows, and other performance arts.
A trademark, patent, or copyright are all examples of ways you protect your intellectual property. Your right to control and benefit from your efforts are increasingly important in our global economy. Registering a formal claim to your property is a critical step in protecting what you own.
What is the difference between TM, SM, ® and other symbols?
You recognize a registered trademark by the symbol of a circle-R following the trademark name or graphic image. Various typographic symbols show copyrights and patents. The presence or absence of a symbol does not change the validity of the registration, but a best practice is to use a circle-R or circle-C for copyrights every time you mention your intellectual property in print. These symbols give legal grounds for claiming damages in trademark litigation. The following is a list of some typical marks you can use on a web page, in written content, or even in a marketing letter.
- TM: The TM sign shows the brand name for an unregistered trademark classified as a product (classes 1 to 34). The owner uses this sign to mark what they believe is their brand mark.
- SM: The SM sign is identical to the TM sign except it designates a service mark (classes 35 to 45).
- ®: ®: Use the ® symbol once you register a trademark or service mark. It shows that the country authority has approved the registration.
- ©: Use the © symbol to mark a copyright. The word copyright is substitute sign for Follow it with the year of the publication and owner's name. Use it whether the work has obtained copyright registration or not.
- Patent Pending: The phrase Patent Pending shows that you filed a patent application but cannot guarantee the application's approval.
What are trademark classes?
Trademark Offices around the world use classes to divide commercial products and services into defined categories. When you apply for your trademark to protect your brand, you must define the class or classes that you believe are best describe your business activity.
There are 45 classes – 34 for products and 11 for services – which countries from around the world have standardized for international use under the "Nice International Classification".
These classes group all known products and services. You can register the same trademark if there are similar classes, for example, you may register the trademark KING for computers in class 23, and you can also register the same trademark in class 24 for cosmetics.
Trademark protection only extends to commercial use within your specified classes. It is possible, then for two entities conducting business in different classes to use the identical or similar trademarks and for each entity to enjoy full trademark protection in their respective classes. You can choose multiple classes under which to conduct business if you feel the protection must extend beyond only one class.
You can perform a search of your class with the following tool Trademark Class Search
Why do I need to perform a trademark search?
Once you have a product or service and think you have a name for it, how do you know you can use it as your own? What happens if you unintentionally use a registered trademark name? In the United States, under what common law, people can lay claim to a mark if they use it. It is not necessary to formally register a trademark. This fact and the sovereignty states have over the creation of chartered business entities and trade names, makes a trademark search imperative before one spends time and money registered a trademark.
Too many people use a name without knowing if they have legal coverage, and they put up big marketing campaigns with names that later they find they cannot use. Performing a Comprehensive Search Study before you decide to register your brand mark is a wise decision especially when you consider future risks of litigation.
It is a good idea to conduct a Study before you start doing business with a trademark. It may not be in your best interest to use a mark if another company is already actively conducting business in the same class. That company may be able to object to your use of the trademark and prohibit you from using the mark in a court of law.
What is a preliminary trademark search?
Your preliminary trademark search is an important first step before you spend time and money considering whether to apply for a potential trademark or not.
If you have trademark experience, you can use free online resources like our Trademark Searchengine, or the Trademark Electronic Search System(TESS) offered to the public by the US Patent and Trademark Office(USPTO) to search for existing marks that are identical to your planned trademark. While preliminary trademark searches are a critical part of your registration process, a successful search that show no conflicts with identical marks does not necessarily mean the Trademark Office will not reject your registration application.
if you have little or no experience dealing with trademarks, we suggest you find a professional help. Our company offers the offers the service Trademark Comprehensive Study. The Study will give you details about the classes where might want to register your trademark, it will also list of identical and similar trademarks, and finally it will provide you an Attorney's recommendation about registration possibilities and use of your trademark.
How do I perform a trademark search?
First, we recommend your start by defining the class you want to register. You can find your class, using our Trademark Class Search tool. Using this tool you enter your product/service, and it will tell you the class or classes you should register.
After you have found your class(es), you can go directly to your country's Trademark Office and perform the search there. You can also try our Trademark Search engines.
When searching, try different combinations of your name. For example, if you are searching for AMAZON, look for AMASON, HAMAZON, or similar word patterns. Try several different combinations of words and spellings.
Notice that several countries do not have online trademarks databases. You must go to local Trademark Office and ask for a list of trademarks.
Trademark Search may be challenging and time-consuming and, if you do not have the time or experience, our company offers the service Trademark Comprehensive Study. The Study will give you details about the classes where you might want to register your trademark, it will also include a list of identical and similar trademarks, and finally it will provide you an Attorney's recommendation about registration possibilities and use of your trademark.
Do I need an Attorney to perform a Trademark Search?
No, you don’t, but if you have little or no experience dealing with trademarks, we suggest you find a professional help. Our company offers the offers the service Trademark Comprehensive Study. The Study will give you details about the classes where might want to register your trademark, it will also list of identical and similar trademarks, and finally it will provide you an Attorney's recommendation about registration possibilities and use of your trademark.
Where can I perform a trademark search?
If you have some knowledge about trademark registration, you can search using our Trademark Search engine. If not, we recommend hiring a trademark attorney or trademark service like Marcaria.com to handle your trademark registration requirements, especially a trademark search because the entire process is complex and takes time.
Notice that if you do not complete the application process carefully, the registration process could be extended many months and cost far more than you intended to pay. The trademark search is a critical part of the process.
A broad trademark search is essential in today's marketplace given the increasing number of unregistered and common law marks. Globalization of markets also raises the question of entering international markets and registration of marks in foreign countries to protect your brand and your property rights.
You need to understand that even a completed comprehensive trademark search does not guarantee acceptance and registration of your mark. A Marcaria.com Trademark Comprehensive Study includes a more extensive review process and, more significantly, a formal opinion estimating the probability of your application's acceptance.