A Spanish trade mark or an EU trade mark: which one, and when

Registering a trade mark means choosing the territory first: Spain, before the Spanish Patent and Trade Mark Office (OEPM), or all twenty-seven Member States at once through the EU trade mark granted by the European Union Intellectual Property Office (EUIPO), based in Alicante. The choice is not settled by comparing fees. It determines which obstacles can block the application, who is entitled to oppose it and what use obligation the proprietor takes on afterwards.

What each office grants, and over which territory

The national mark is governed by Spanish Law 17/2001 of 7 December on Trade Marks and takes effect in Spain alone; its article 31 sets the term at ten years from the filing date of the application, renewable for successive ten-year periods.

The EU trade mark is governed by Regulation (EU) 2017/1001 on the European Union trade mark and is filed with the EUIPO, as article 84 of the Trade Marks Act provides. Its article 52 sets the same ten-year term, renewable under its article 53. A single procedure produces an exclusive right across the twenty-seven Member States.

The preparatory work is the same either way: the choice of sign, the Nice Classification classes and the prior-rights search arise identically in both routes, and are examined in Registering a trade mark in Spain: the factors behind solid protection. What is decided here is the territory.

Why unitary character governs the whole comparison

Article 1(2) of the Regulation provides that the EU trade mark has unitary character and has equal effect throughout the Union: it may only be registered, transferred or declared invalid in respect of the whole Union. There is no partial grant, and therefore no such thing as a mark valid in twenty-three States and refused in four.

Two consequences follow. The first concerns the absolute grounds for refusal —lack of distinctive character, descriptive signs, deceptive marks— listed in article 7 of the Regulation, which under its paragraph 2 apply even where the ground exists in only part of the Union: a term that is unremarkable in Spanish may be descriptive in another official language and bring down the entire application. The Court of Justice has confirmed the point: it follows from unitary character that the sign must possess distinctive character, whether inherent or acquired through use, throughout the Union (Court of Justice, Third Chamber, judgment of 25 July 2018, Nestlé and Others v Mondelez, joined cases C-84/17 P, C-85/17 P and C-95/17 P, ECLI:EU:C:2018:596), delivered under the earlier Regulation (EC) 207/2009, whose article 1(2) is reproduced unchanged today.

The second concerns third-party earlier rights. Article 8(1) allows registration to be refused, upon opposition by the proprietor of an earlier mark, where there is identity or a likelihood of confusion; and its paragraph 2 treats as earlier marks not only EU marks but those registered in any Member State. The period for filing opposition is three months from publication of the application, under article 46(1). A single national opposition —from a Portuguese, Austrian or Greek proprietor that no Spanish company would have in mind— is therefore enough to put the whole EU application at risk.

If the EU application fails: conversion into national applications

Article 139(1) of the Regulation allows an EU trade mark application or registration to be converted into a national trade mark application where the application is refused, withdrawn or deemed withdrawn, or where the mark ceases to have effect. The advantage is decisive: under its paragraph 3, the resulting application keeps, in each Member State, the filing date or priority date of the EU application and, where applicable, the seniority claimed.

It also has limits. Its paragraph 2 excludes conversion in respect of a Member State where, according to a decision of the Office or of a national court, a ground for refusal applies to the application: if the opposition succeeded on the basis of an earlier Portuguese mark, conversion into a Portuguese application is not available, although it remains available elsewhere. The deadlines are three months under its paragraphs 4 and 5, and article 140(1) does not treat the request as filed until the conversion fee has been paid; each national office then charges its own fee, as article 141(3) contemplates and as article 86 of the Trade Marks Act regulates before the OEPM. Conversion is a safety net, not a plan: it multiplies fees and files precisely when matters have already gone wrong.

The official fees of each route

The OEPM fees in force since 1 April 2026 are as follows:

• Trade mark or trade name application: 150.45 euros for the first class, or 127.88 euros where filing and payment are electronic; 97.48 euros for each further class, or 82.84 euros electronically.
• Renewal: 174.18 euros for the first class, or 148.06 euros electronically; 116.95 or 99.39 euros for each further class, with surcharges of 25 per cent during the first three months of delay and 50 per cent during the following three.
• Application for a declaration of invalidity or revocation: 200.00 euros, or 170.00 euros electronically.

At the EUIPO, the basic online application fee is 850 euros for one class, plus 50 euros for the second class and 150 euros for each class from the third onwards; electronic renewal follows the same structure.

An EU trade mark therefore costs, in official fees, somewhat more than six times the equivalent Spanish application, but covers twenty-seven markets instead of one, and its second class is cheaper. The arithmetic is conclusive only at the extremes.

The decisive test: where you sell today and where you plan to sell

Where the business, the client base and the sales channels are in Spain, the national route is the proportionate one: less exposure to oppositions and a more predictable procedure, with a two-month opposition period from publication in the Official Industrial Property Bulletin set by article 17(1) of the Implementing Regulation of the Trade Marks Act, approved by Royal Decree 687/2002. It is not, however, protection insulated from Europe: article 6(2) of the Trade Marks Act treats as earlier marks against a Spanish application both Spanish marks and EU marks.

Where the company sells online into other Member States, exports, distributes through third parties or expects to open a subsidiary abroad, the coherent route is the EU trade mark: protection must cover the market in which the sign is used. That comes with a burden, since article 18(1) of the Regulation requires genuine use in the Union within five years of registration, just as article 39(1) of the Trade Marks Act requires such use in Spain. In assessing that use, the borders of the Member States are to be disregarded and regard had to whether the use serves to maintain or create market share (Court of Justice, Second Chamber, judgment of 19 December 2012, Leno Merken, case C-149/11, ECLI:EU:C:2012:816).

There is also a middle route. A proprietor who already holds a Spanish mark may later apply for an EU trade mark and claim the seniority of the earlier one under article 39 of the Regulation, where the sign is identical and the goods or services coincide. Starting at the OEPM does not close the European door.

How we help you choose between a Spanish and an EU trade mark at RCM Legal

There are two decisions that are frequently made badly. The first is choosing the territory by the fee rather than by the market: a mark intended to be sold across Europe is registered in Spain alone and, when the conflict arrives, the right does not reach where the customer is. The second is the opposite one, filing an EU application without having searched the earlier rights of the twenty-seven Member States, because unitary character turns an isolated opposition into a global problem and later conversion arrives with short deadlines, multiplied fees and the opponent's State excluded.

At RCM Legal we assess, before anything is filed, where your company sells today and where it plans to sell, we search the earlier rights in the relevant territory and we decide with you the route —OEPM, EUIPO or a combination of both with a seniority claim—, the classes and the timetable. As lawyers specialising in trade marks and industrial property in Murcia, we handle the filing, deal with oppositions and monitor the portfolio afterwards. If you are about to launch a brand or are weighing the move into Europe, tell us about your case and we will set out which route actually protects your business.