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 a company’s products and services and distinguishes them from those of its competitors in the market. The name (the verbal element) is not the only component of a trademark—figurative elements such as logos, design, images, colors, and sounds also create an identity that can be protected by 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 trademark symbol to show that the trademark has been filed at the trademark office and is still undergoing the registration process.
SM Some countries use this service mark symbol to show that the service mark has been filed at the trademark office and is still undergoing the registration process.
What is the difference between a trademark, patent and copyright ?
You can lay claim to your work in many ways. Trademarks, patents, and copyrights offer protection to intellectual property owners. 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 services from others 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 alone (otherwise we’d all be doing it). You must materialize your concept into a tangible invention, innovative product, device, or process that offers new solutions to an existing problem.
Copyright protects all types of original published, performed, and printed creative works of art, literature, and music. It prevents people from using, reproducing, or distributing copyrighted works without the permission of the artist, author, composer, etc. Types of work covered by copyright protection include:
- 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.
Trademarks, patents, and copyrights are all examples of ways you can protect your intellectual property. Your rights 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?
The symbol of a circled letter R after a trademark name or graphic image means that the preceding trademark has been registered. Various typographic symbols indicate copyrights and patents. The presence or absence of a symbol does not change the validity of the registration, but the best practice is to use 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 or trademark symbol indicates an unregistered trademark for one of 34 different classes of products. Owners use this symbol to claim the preceding name or logo as the Trademark of their product.
- SM: The SM or service mark symbol is similar to the TM symbol except it indicates a claim to a mark for a service (one of 11 classes of service) rather than a tangible product.
- ®: Use the ® symbol once you’ve registered your trademark or service mark. It shows that the country authority has approved the registration.
- ©: Use the © symbol to indicate copyrighted material. The copyright notice should appear on the material as Copyright © followed by the date the work was created, the copyright owner’s name, a period, and finally “All Rights Reserved.” Like this: Copyright © 2021, John Smith. All Rights Reserved. Use it whether the copyright has been registered 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 best describe your business activity.
Countries around the world have standardized 45 classes (34 for products and 11 for services) for international use under the Nice International Classification.
These classes group all known products and services. If applicable, you can register the same trademark in more than one class; for example, you may register the trademark KING for computers in class 23 and register the same trademark in class 24 for cosmetics.
Trademark protection only extends to commercial use within your specified classes. It is, therefore, possible for two entities conducting business in different classes to use identical or similar trademarks and for each entity to enjoy full trademark protection in their respective classes. If you feel that protection should extend to include more than one class, you can choose multiple classes under which to conduct business.
You can search for your trademark class with this Trademark Class Search tool.
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?
Too many people use a name without knowing whether or not they have the legal right to do so. They organize massive marketing campaigns with names they later find they’re not allowed to use. Performing a comprehensive search before deciding which trademark to register is a wise thing to do, especially when you consider future risks of litigation.
It is a good idea to carry out some research before starting to do 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. The other company may object to you using the trademark and legally prohibit you from doing so.
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 seek professional help. Our company offers a Comprehensive Trademark Study service. The Study gives you details of the classes in which you might want to register your trademark; it also lists identical and similar trademarks, and finally, you get an Attorney's recommendation about registration possibilities and use of your trademark.
Where can I perform a trademark search?
If you know a little about trademark registration, you can search using any online trademark search tool. If not, we recommend that you hire a trademark attorney or trademark service like Nominus.com to handle your trademark registration requirements, especially the trademark search because the process is complex and relatively time consuming.
Please note that if you don’t manage to complete the application process correctly, the registration can drag on for several months and end up costing 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 trademarks. Globalization also raises the question of entering international markets and registering trademarks in foreign countries to protect both your brand and your property rights.
Please note that even a completed comprehensive trademark search does not necessarily guarantee your trademark will be accepted and registered. A Comprehensive Trademark Study includes an extended review process and, more significantly, a formal evaluation of the likelihood that your application will be successful.