Registering a trade mark in Spain: the factors behind solid protection

Registering a trade mark protects the name and logo a business trades under and confers an exclusive right over them. Not every application is granted, however, and not every grant delivers useful protection: the outcome depends on how the sign is chosen, on the classes it is registered for and on whether earlier marks exist. Below are the factors that make a trade mark registration solid.

What can be registered, and the distinctiveness requirement

A trade mark is the sign that distinguishes one undertaking's goods or services from those of others, under Law 17/2001 of 7 December on Trade Marks. It may be a word mark (words or letters), a figurative mark (a logo) or a composite mark (both).

Its essential requirement is distinctiveness: the sign must identify commercial origin. That is why Article 5 of the Trade Marks Act sets out the absolute grounds for refusal: generic signs, signs describing the product or service itself, deceptive signs and those contrary to public policy are not registered. Initials and letters can be registered, but a very short sign, or one close to being descriptive, has weaker distinctive character — worth reinforcing with a graphic element.

The decisive factor: the earlier-rights search

The most frequent source of conflict is not the shape of the sign but the existence of earlier marks. Articles 6 to 9 of the Trade Marks Act lay down the relative grounds for refusal: a mark identical or similar to an earlier one cannot be registered where it covers identical or similar goods or services and a likelihood of confusion results.

That risk is assessed by reference to the visual, phonetic and conceptual similarity of the signs and the similarity of the goods or services. Hence, before filing, a search of the official databases is essential —the OEPM register, TMview and the EUIPO database— to reveal whether an earlier right exists that could block the registration or prompt an opposition.

Choosing the classes: the Nice Classification

Protection is limited to the classes of goods and services applied for, under the Nice Classification, which orders economic activity into forty-five classes. Legal services fall within class 45. It is advisable to cover every class in which the business operates or expects to operate; a law firm, for instance, may add class 35 for business advisory services. A mark registered in a single class does not prevent a third party from using it in a different, unrelated class.

Territorial scope

Registration protects only in the territory for which it is granted. There are three routes: the national route before the OEPM, for Spain; the European Union trade mark before the EUIPO, which with a single application protects across the twenty-seven Member States; and the international route through WIPO's Madrid System, for the countries chosen. The choice depends on where you operate and where you expect to grow: a business with international clients rarely finds national protection alone sufficient.

The procedure and the life of the mark

Once filed, the office carries out a formal examination and an examination of the absolute grounds, publishes the application in the Official Industrial Property Gazette and opens a two-month opposition period, set by Article 17.1 of the Trade Marks Regulation, for holders of earlier rights to react; once that stage is cleared, the mark is granted. A trade mark lasts ten years from the filing date, under Article 31 of the Act, and is renewable for successive ten-year periods indefinitely.

Two obligations deserve attention: there is a duty of genuine use —a mark not used for five years may be revoked— and it is advisable to watch the register in order to oppose later applications that imitate it. A mark that is neither used nor defended loses much of its value.

How we can help you register your trade mark at RCM Legal

There are two costly mistakes that tend to arrive together: investing in a name —signage, website, stationery, campaigns— before checking whether an earlier mark blocks it, and registering in a single class an activity that in fact spans several. The first forces a business that had become known to rename itself; the second leaves the door open for a third party to trade under an almost identical sign in the adjacent sector. To that is added later neglect: a mark that is neither genuinely used nor watched against third-party applications loses much of its legal value.

At RCM Legal we run the earlier-rights search before you invest, decide with you the type of sign —usually the word and the logo separately— and the classes covering your current and expected activity, and we handle the filing before the OEPM or the EUIPO. We then watch the register and file oppositions where a third party applies for a confusingly similar sign. As trade mark lawyers in Murcia, if you are about to launch a brand or a trade name, tell us about your case and we will check that it is viable before you spend on it.