Trademarks and Distinctive Signs

Trademark Registration in Spain: OEPM

The Spanish Patent and Trademark Office (OEPM) handles national trademark registration. The procedure follows these stages:

1. Application: Filed electronically (OEPM e-office) or on paper. Basic fee: 144.58 € for one class (Nice Classification). Each additional class carries a supplement.
2. Formal examination: The OEPM verifies formal requirements (graphic representation, applicant identification, list of goods/services).
3. Publication in the BOPI: If it passes, it is published in the Official Industrial Property Bulletin, opening a 2-month opposition window.
4. Substantive examination: The OEPM checks for absolute grounds (Art. 5 Trademark Act) or relative grounds (Art. 6-10). Only absolute grounds are examined ex officio; relative grounds require opposition.
5. Grant or refusal: If no oppositions are filed or they are resolved favorably, the mark is granted for 10 years from the filing date.

EU Trademarks (EUIPO)

For EU-wide protection, applications are filed with the European Union Intellectual Property Office (EUIPO), headquartered in Alicante. Advantages:

• Unitary effect: A single application protects across all 27 Member States.
• Fee: 850 € for one class (electronic filing), 50 € for the second class and 150 € for each additional class.
• Opposition period: 3 months from publication.

Trademark Types

The Trademark Act recognizes several types: word marks (text only), figurative marks (graphic elements), three-dimensional marks (product shape), sound marks, color marks and pattern marks.

Opposition and Renewal

Opposition

Any third party with a legitimate interest may oppose registration during the publication period. Common grounds include likelihood of confusion, reputation of the prior mark, and bad faith.

Renewal

Trademarks are renewed every 10 years indefinitely, provided the renewal fee is paid. Applications can be filed 6 months before or 6 months after expiry (with a surcharge).

Important: If the mark is not used for an uninterrupted period of 5 years, it may be revoked for non-use.

Infringement Actions

The owner can bring: cessation actions, damages claims (lost profits, moral damage, infringer's profits), interim measures (seizure, market withdrawal), and criminal proceedings under Art. 274 of the Criminal Code (1-4 years imprisonment for commercial trademark counterfeiting).

Jurisdiction lies with Commercial Courts (national marks) or EU Trademark Courts (Commercial Courts of Alicante, for EU marks).