How to register a trademark in Spain, step by step

Trademark registration is an essential step to protect the name, logo or any distinctive sign that represents your company or product. Having a registered trademark gives you exclusive rights over its use and protects you against possible infringements by third parties.

In addition, registration not only protects you legally, but also increases the value of your business, since a registered trademark is an intangible asset that can grow over time and can be valued economically.

In Spain, the registration of trademarks is carried out at the Spanish Patent and Trademark Office (OEPM). This agency is responsible for receiving, examining and granting property rights over trademarks, patents, industrial designs and other industrial property assets.

The process of registering a trademark may seem a bit complicated if you have no previous experience, but in reality, following the right steps, it is relatively simple. In fact, at Bamboo.legal we always say that the actual registration process is "the least" of the whole trademark protection process.

In this article we will explain clearly and closely how to register a trademark in Spain, step by step, from the previous research to the granting of the trademark by the SPTO. We will also discuss the fees, deadlines and possible difficulties you may encounter along the way.

Step 1: Pre-registration research.

Importance of prior trademark research.

Before filing an application to register a trademark, it is essential to carry out a previous research. This is what we at Bamboo.legal call a "feasibility report" or "search report". This step will help you make sure that the trademark you want to register does not conflict with existing trademarks or other intellectual property rights. Moreover, it can save you time, money and possible legal problems in the future.

The main purpose of this search is to verify if there is already a registered trademark that is the same or similar to yours. In case your trademark is too similar to another one already registered, you could face an opposition from the owner of the previously registered trademark and the SPTO could refuse your application.

In addition, using a trademark that infringes on pre-existing rights could land you in a trademark infringement lawsuit and result in having to rebrand, which can be very costly both financially and in terms of your business reputation.

On the importance of doing a search report before launching your brand to the market, we talked about it at this other post.

How to search for similar brands?

There is an art to researching and finding out if there are identical or similar trademarks to the one you want to register. Many people think that searches consist of seeing if the web domain is free, or searching in Google. Nothing could be further from the truth.

Although there are free tools that facilitate these searches, we should not rely 100% on their results. One of these tools is TMViewdeveloped and published by the European Union Intellectual Property Network (EUIPN). On how to use TMView, we have this postwhere we explain it in detail.

Although TMView is a relatively powerful and fairly reliable search engine, the truth is that trademark attorneys, IP agents and other trademark law professionals use paid software that allows them to search much more thoroughly than a person can do manually by searching TMView or the offices' registration databases. In addition, interpreting the results is not always easy, and knowing the trademark comparison criteria followed by the registry examiners is critical to knowing whether an earlier registered mark is really dangerous or not so dangerous.

This is the first point in which, if you want to do it well, but well, well, you should hire a specialist. Having a first surface search already done with TMView is useful and facilitates the work of those of us who dedicate ourselves to this; but the complete search should be done by a professional.

Step 2: define the type of brand.

 What types of brands are there?

Once the previous research has been done and the viability of your trademark has been confirmed, the next step is to define the type of trademark you want to register. This is essential, since the law contemplates several types of trademarks and, depending on the type you choose, the protection will be different.

A trademark can be any sign that has the capacity to distinguish a product or service and that can be represented clearly and precisely. Although the standard contemplates many types of marks (color marks (above, this post), sound markings (about it, this other post), three-dimensional marks, etc.), the fact is that, in the vast majority of cases, the most common types of marks are reduced to two: word (or verbal) and figurative (or graphic).

A word mark is one that consists exclusively of letters or numbers, and is represented in the register in standard characters. For example, this. A figurative trademark is one that incorporates a logotype, isotype, isologotype or isologotype (if we have not said it right, forgive us branding people...), whether or not it contains letters or numbers. For example, this.

Do I apply for my trademark with logo or without logo?

This is a classic question: do I include a logo in my application, and thus register a figurative mark, or do I not, and register a word mark?

At Bamboo.legal we usually say that this decision depends, fundamentally, on two things:

• First, the originality of the logo itself. If the logo to be used is very complex, it may be interesting to include it in the application, not only to have it protected, but also to use the trademark in the same way it was registered. On the importance of using the trademark in the same way it was registered or altering it very little, we talked about in this post.
• Second, the results obtained from the search report. Although words normally have more comparative weight than graphics (because we usually pronounce trademarks verbally and retain sounds better than images), it may happen that in the research prior to registration we have detected a similar trademark, whose risk of opposition can be reduced (only slightly, in most cases) by including in the registration a logo very different from that trademark. For example, in other very different colors.

In short, there is no yes or no answer. You have to look at each case, analyze the logo and the previous trademarks.

Of course, you also have the option of making two registrations, one denominative and the other figurative, although the costs will be higher.

Brand or trade name?

When you go to file the application for registration you will see that you have the option of registering a trade name instead of a trademark.

It is very striking how trade names are generally requested by individuals (perhaps because they are still very much ingrained in everyone's mind, or because the presence of the word "trade" seems to give it more importance); but, in reality, most industrial property offices and professionals do not usually apply for trade names, but for trademarks. We explain why.

Trade names are regulated in our legislation. Trademark Law and, at least in theory, they distinguish companies in the course of trade from other companies; whereas trademarks distinguish products and services. The line between the two is somewhat blurred, but that is the distinction made by the law.

The reality is that the classification of goods and services, which we will discuss below, is currently so extensive and covers so many types of services, that the name of a company can perfectly well be protected as a trademark, since, in the end, companies provide services or sell products.

Although, on the surface, the protection of a trade name under the Trademark Law is the same as that of a trademark (same 10-year term, renewable indefinitely, etc.), in practice it can give rise to certain problems, especially when it comes to internationalizing protection or exercising rights against third parties.

In general, at Bamboo.legal we are in favor of choosing the trademark registration, and not the trade name registration, because we do not see that the latter offers any advantage over the trademark.

Step 3: classification of products and services.

Once you have decided what type of trademark you are going to register, it is time to define the goods or services that will be protected by that trademark. This is done through the Nice ClassificationThe Trademark and Trademark Office, an international system that organizes goods and services in 45 different classes. Choosing the right classes is key, as it determines the scope of protection of your trademark.

What is the Nice Classification?

The Nice Classification is an international system adopted by most countries to classify the goods and services for which a trademark is to be used and registered. This classification divides goods into 34 classes (classes 1 to 34) and services into 11 classes (classes 35 to 45).

Each class contains a list of goods or services that can be protected under the trademark. It is important to understand that trademark protection is only granted within the classes you have selected and for the goods and services designated in that class. This means that if you register a trademark for a certain class, you will only have exclusivity in that class and not in others. This is called the principle of specialty and is the reason why there are identical trademarks for different products.

However, for the purposes of similarity with other marks, classes cannot be considered watertight compartments either: the nature, purpose, target public and sales channels of the goods and services must be taken into account. For example, a trademark registered in class 9 for "software" may be opposed to the same or a similar trademark for "software development" in class 42, even though they are different classes. The consumer may reasonably be confused into believing that the company that gives its name to a software also provides computer development services.

How to select the right classes?

Choosing the right classes for your brand is essential, as it defines the sectors in which you will have protection. Here are some steps to do it effectively:

• Think about your current and future activity: it is important that the selected classes not only cover what your company does now, but also possible products or services that you may offer in the short or medium term. This will save you from having to register a new trademark later on, since the list of goods and services cannot be extended in the same file. However, don't go crazy either. Be realistic about what you do and what you are going to do with the trademark.
• See the official list: en this link of the SPTO you have a search engine for the classification. You can search for key terms describing your products or services to make sure you select the right classes.
• Don't oversize: While it may be tempting to select many classes for greater protection, this can increase costs and complicate brand maintenance. It is best to be strategic and select only the classes that really fit your current and future business. Also, remember that you are obliged to use the trademark as you registered it and for those goods and services, as we explain here.

At this post we explain in more detail how to choose products and services within the classification.

Step 4: Preparation and submission of the application. Payment of fees.

Once you have done the previous research, defined the type of trademark and selected the appropriate classes for the goods or services you wish to protect, it is time to prepare the application to register your trademark before the SPTO.

What information do I need to apply?

Our advice is that, before filling in the registration form, you should check that you have all this information:

• Brand name and, if applicable, logo in good quality if the decision has been made to include the logo.
• Full details of the applicant: name and surname (in the case of an individual) or company name (in the case of a legal entity); tax identification number; and full address. Please note that a trademark may be filed in the name of several owners, and in that case, you may specify the percentage of ownership of each one. If you do not specify the percentage, the SPTO will consider that the distribution is in equal parts.
• Complete list of products and services. It is highly recommended to have prepared in a separate document all the products and services you want to cover with the trademark, grouped by classes. This will make it easier for you to include them later in the form.

Where and how do I fill out and submit the registration form?

Nowadays, the easiest way to register a trademark in Spain is online, through the SPTO's electronic headquarters. You will need to access its website and click on the "Sede electrónica" option, visible at the top right.

Once inside the electronic headquarters, you must click on the option "Trademarks and trade names", and there on "Procedures for the registration of trademarks, trade names, transformations and maintenance of rights".

Within this option, you must go to "Application for trademarks, trade names and transformations". And within it, to "Trademark or trade name application". This opens the registration form. You must click on "Accept" and "New filing".

The first thing you must indicate is the information of the applicant, who is going to be the holder of the trademark: complete data, nationality, residence, state of establishment and address. In the address for notifications it is advisable to put e-mail, unless you prefer that the notifications reach you by postal mail to the physical address you have indicated. Please note that if you reside in a country that is not a member of the EU, you need to appoint an Official Industrial Property Agent as representative. At Bamboo.legal we are, so do not hesitate to write to us. here.

The next step is to enter the brand data. Under "Modality", indicate "Trademark of Products or Services". Collective marks and warranty marks are other modalities foreseen for very specific cases and deserve another post. The reasons why you should not choose "Trade Name" as a modality are given above.

In "Type of Distinctive" choose "Denominative" or "Figurative", depending on whether the mark has a logo or not. The other types are not very frequent and it is very rare that it is the applicant himself, without professional assistance, who files this type of marks. If the type is "Denominative", we will have to indicate in the "Denomination" field the name of the mark. If the type is "Figurative", we will have to upload an image of the logo in the "Distinctive" field; and enter the word elements of the mark if it has them (it may not have them, if it is an exclusively graphic mark that does not have verbal characters). At this point, it is essential that the denomination coincides exactly with the one appearing in the logo (with literally all its letters, figures and characters). Otherwise, the SPTO will suspend the processing of the file.

Regarding the "Declaration of unclaimed elements", our recommendation is not to check the box. The same as the "Description of the mark", which is not mandatory.

The next step, on the same page of the form, is to indicate the list of goods and services according to the classification, which we have already prepared. You have to choose the class, add it, delete the products/services that appear by default if you do not want to cover them (this is called "class heading" or "class heading").class heading"), add in the blank field our listing (separating each product or service with a semicolon) and click on accept.

The "Unionist Priority Claim Data", "Exhibition Priority Claim Data" and "Acquisition of Distinctiveness by Use Claim" boxes will remain unchecked for the time being. To understand the implications of each of these options, professional assistance is required.

On the last page of the form, we will be able to download and review a summary of the application (highly recommended, to check that we have not made any mistakes) and proceed to the payment.

Payment of application fees.

Applying for registration of a trademark, even if it is not done through a trademark attorney or an Industrial Property Agent, has a cost in official fees that are paid to the SPTO.

The cost of registering a trademark in Spain varies according to the number of classes in which you want to protect your trademark. The fees updated to each current year can be checked at this link of the SPTO.

Fees can be paid in several ways:

• Through the AEAT gateway.
• Through the CaixaBank gateway.
• By credit or debit card.

They may also have been paid prior to the submission of the form (here) and indicate on the registration application the payment barcode.

Step 5: Registration process.

Once the trademark application has been formally filed, the registration process begins. This process normally consists of the following phases:

Phase 1: form examination.

The SPTO first examines whether the application complies with all the formal requirements established in the Trademark Law.

This includes:

• That the application is correctly completed.
• That the corresponding fees have been paid.
• That the documents provided are correct and in the proper format.

If the SPTO detects any formal deficiency, it will decree the formal suspension of the file and will notify you, so that you correct the irregularities within a period of 1 month.

Phase 2: publication of the application.

Once the formal examination has been passed, the SPTO publishes the trademark application in the Official Industrial Property Gazette (BOPI).

This publication, which usually occurs within approximately 2 weeks to 1 month from the date of application, is very important, mainly for two reasons:

• First, because it opens a period of 2 months for any interested third party to file an opposition, requesting the SPTO to refuse the trademark. For example, the owner of that earlier similar trademark that we detected in the previous search report, and that we thought was not so dangerous...
• And, second, because the publication grants provisional rights over the trademark, even if it has not yet been granted. With the trademark applied for and already published, the applicant may claim against any third party that is using an identical or similar trademark for identical or similar goods or services, and demand a reasonable and adequate compensation under the circumstances.

Phase 3: substantive review and award.

Once the application has been published and the 2-month period for oppositions has elapsed, the SPTO conducts the substantive examination, in which it reviews two issues:

• First, if the trademark incurs in any absolute prohibition of registration. These prohibitions are those that operate independently of the existence of other third party rights (that is why they are "absolute"), and refer to reasons of public interest, i.e., circumstances in which it is not admissible for a trademark to be registered. For example, because the trademark is generic (it directly designates the name of the product or service), descriptive (it is composed exclusively of elements that refer to characteristics of the product or service), misleading (it may mislead the consumer about some characteristic of the product or service) or contrary to public order or morality.
• Second, if the file has received opposition from third parties.

If the substantive examination results in the SPTO indicating an absolute prohibition of registration, or if there are oppositions from third parties, the SPTO decrees the suspension of the file and notifies you, so that within a period of 1 month you can present arguments in defense of the granting of your trademark. About what to do if you have received a trademark suspension, we have this post. Obviously, failure may lead to a subsequent rejection of the file, without refund of the fees paid.

If the substantive examination does not result in any prohibition of registration and there are no oppositions, the SPTO proceeds to the granting of the file. Normally, the granting of the trademark usually takes about 8 months from the application, provided that there are no oppositions and the registration process is smooth.

The granting of the file involves the delivery by the SPTO of the trademark registration title and the publication of the grant in the BOPI. For many years, the registration title has been exclusively digital. Therefore, be wary of those firms that want to charge you for the delivery of the title, because it literally means forwarding an email.

The trademark is granted for 10 years from the date of application, renewable indefinitely for successive 10-year periods.

Finally, regarding this phase, keep in mind that, even if there have been no oppositions, the owner of an earlier registered trademark that is identical or similar to yours may still challenge the validity of your trademark file, even if it has already been granted, by requesting its nullity. We explain it in this post. This usually occurs when the owner of the prior trademark has not detected the publication of your trademark application, in most cases because he has not contracted a monitoring service, as explained in the following point.

Step 6: Surveillance of similar brands.

As you will have seen, the registration process is relatively simple. Where the complexity of the matter lies is mainly in the prior research and searches, and, as we shall now see, in the subsequent monitoring of similar marks.

One of the most frequent mistakes that trademark applicants tend to make is to believe that the SPTO is going to refuse on its own, ex officio, a trademark that resembles theirs. This is not the case.

In order for the SPTO to reject an application for a trademark similar to an earlier trademark, the owner of that earlier trademark must file an opposition. Opposition is a formal process, which requires the payment of a fee and the preparation of a written statement of allegations in which the opponent compares the two trademarks, compares the goods and services designated by both, and requests the SPTO to refuse the new trademark. This opens the suspension process referred to above.

Obviously, in order for the opponent to be able to file an opposition, he must have previously detected the similar trademark application. The SPTO may notify prior owners of similar trademarks, but it is not obliged to do so and, in practice, these notifications are not at all exhaustive.

The way for a trademark holder to detect any subsequent application that resembles its own is through a trademark surveillance service. There are computer programs that are designed to detect these similarities, and as the trademark application is eventually made public in the BOPI, they can make a "match" with monitored denominations and thus the warning is triggered.

In terms of costs, it is not coherent for the applicant himself to hire this type of software. The logical thing to do is to contract the service to a trademark attorney or an Industrial Property Agent, who will also filter the results provided by the software.

We talked more extensively about trademark surveillance in this post.

Bonus: final tips.

Finally, we do not want to say goodbye without giving you some final tips to make your trademark registration a success:

• Be creative: make sure that your trademark has distinctive elements, that it is not made up exclusively of generic or descriptive words, and that it does not resemble any prior trademark.
• Be precise: register the trademark that you will actually use, or at least differ only in insignificant details.
• Be realistic: don't cover more kinds of products and services than you will actually use, currently or in the short/medium term.

As you may have seen, the registration process is pretty easy, right? But, isn't the previous searches and surveillance not so easy? Working hand in hand with a branding agency and a trademark attorney or an Industrial Property Agent is key; and, since these professionals will work on the complicated part, what reason is there not to delegate the registration application as well?

At Bamboo.legal we usually offer a pack, which is already a classic in the firm: prior search report + application for registration + surveillance of similar trademarks. We believe that it makes sense that the person who prepares the prior search report should be the one who applies for registration (since he/she knows the results of similar trademarks first hand), and that he/she should also be the one who watches for any similar trademarks in the future, in order to be able to file an opposition.

We are of the opinion that simple registration, without more, brings very little value to the customer.

Do you understand now why we say that the registration process is "the least important thing"?

If you have any questions, you can write to us at info@bamboo.legal. We will be glad to help you ;)

Y si todo esto te ha sabido a poco, aquí te dejamos una guía completa en PDF, con explicación en más detalle, de todo lo dicho en este post: Guía Marca