At the firm, we always say that the trademark registration process is “the least of it.” In reality, it's relatively easy: choose products and services from the Classification (which you can read about here), do some preliminary research on which brands are already registered (you can read about this here), and that's it.
Is that it? No.
In our opinion, if you want to register a trademark or trade name, the value of hiring a professional for this (a Industrial Property Agent or a law firm specializing in patents and trademarks) is in the previous section (the completion of a professional feasibility report, which you can read about here) and in the back after registration (the monitoring of similar trademarksToday we will discuss the latter.
At Bamboo Legal, as industrial property lawyers, we know how crucial it is to actively monitor trademarks similar to yours. It is not enough to register the trademark; you must continuously protect it from possible infringements or misuse.
The first mistake: believing that the registry office acts ex officio.
One of the biggest misconceptions among trademark owners is to assume that trademark registries will act on their own initiative to protect them against similar or identical registrations. However, the reality is quite different. Most registries, such as the Spanish Patent and Trademark Office (OEPM) or even the European Union Intellectual Property Office (EUIPO), they do not actively review new registrations to identify potential conflicts with pre-existing trademarks.
There are two possible reasons for this. The first is simply a question of resources: detecting and rejecting trademarks similar to existing ones would require a significant investment in technological tools and personnel. The second, and probably more important, reason is that rejecting trademarks similar to existing ones is not a matter of public interest, but rather remains in the private sphere of each owner. In other words, it should be up to each trademark owner to decide against whom and what they want to oppose (and, where appropriate, negotiate coexistence), without the State (through the SPTO, in this case) deciding on behalf of the owner.
At the office, we always use the same example: I can try to register the trademark “Coca-Cola” with the OEPM today, and if The Coca-Cola Company does not file an opposition, the OEPM will grant it. Obviously, it is more likely that The Coca-Cola Company will detect my application, file an opposition, and the OEPM will refuse to register my trademark. But this requires a proactive attitude on the part of the owner: monitoring their trademark and filing an opposition.
But how does The Coca-Cola Company detect my request?
It is true that the Trademark Law states (Article 18.4) that the SPTO “shall communicate the publication of the application [...] for information purposes only, to the owners of prior registered or applied-for signs that have been detected as a result of a computer search carried out by the Office in accordance with its technical and material resources.”.
The reality: for years and years we have seen identical trademarks to previous ones being applied for without the SPTO communicating anything.
Similar brand monitoring software.
There are several computer solutions on the market that can detect trademark applications that are similar to others already registered, in any territory.
The reason for this possibility is that a trademark application is published in an official gazette (in Spain, the BOPI – Official Industrial Property Bulletin).
In terms of information technology, it is possible to develop and market a program that links trademark applications published in the bulletin with other similar names (word or phonetic) that the program monitors. Several IT companies have already done so.
These types of programs are not usually cheap, nor is it normally worth paying for them if you are a company or individual looking to monitor your own brands (unless you are a large multinational corporation, and even then, we have our doubts). It is logical and common for law firms specializing in patents and trademarks, or industrial property agents, to contract this type of program, with the end company or individual subcontracting the firm's services. Furthermore, filtering results is not easy.
At Bamboo Legal, we specialize in patents and trademarks and offer these types of solutions.
By conducting constant monitoring, we ensure that we can quickly identify and act if a trademark similar to yours is applied for, whether in Spain, the EU, specific foreign territories (e.g., the United States), or worldwide.
Monitoring is not an automatic process: we review the results one by one, manually and personally.
The second misconception is that the process is completely automatic; that, as a customer, you are paying for someone to have software that detects similar trademarks, notifies you through an automated notification system, and that's it.
It is essential to understand that trademark monitoring is by no means an automatic process. Although industrial property agents use these solutions and tools, the results produced by the program must be filtered, and the evaluation and analysis of similarities must be carried out by experts.
At Bamboo Legal, our industrial property attorneys are dedicated to reviewing each result manually. Yes, manually: one by one. It is a task to which we devote several hours every week, which adds value to the service and, of course, justifies its cost.
This personalized approach ensures that every potential conflict is carefully evaluated.
The importance of filing an objection on time. Is everything lost if I don't?
Detecting a potential similar trademark application is only the first step. Speed and efficiency in filing an opposition are vital to protecting your trademark if you ultimately want to take action against the owner who has applied for a trademark similar to yours.
In Spain, the deadline for filing an opposition to a trademark application is two months from the publication of the application in the BOPI. At the EUIPO, the deadline is three months.
If you do not act within this period, and there are no other grounds for refusing the trademark (e.g., another opposition), the registration office will grant the application.
If you do act within that period, once an opposition has been filed, the Office will suspend the processing of the file, grant the applicant a period of time to submit their arguments, and issue a decision. You can read more about this here. this other post, if you are in the opposite position (if you have applied for a trademark and the Office has suspended it).
However, if you have detected a similar trademark and missed the deadline for filing an opposition, all is not lost. Although missing this deadline can complicate matters somewhat, there are still legal actions that can be taken.
We explain it in this post. A process to cancel the trademark that has been granted can still be initiated, but it will be more expensive and more complex than if you notice the application for a similar trademark in time and file an opposition within the deadline.
All right, but how expensive is this?
Perhaps, if you've come this far, it's because you have a registered trademark (or are thinking of doing so) and are interested in keeping an eye on it.
You may think that having a team of lawyers monitoring your trademark and notifying you if a similar trademark is applied for can be very expensive.
Not at all.
We would need to review your case and send you a personalized service proposal, but normally, for surveillance, for example, in Spain, you would only have to pay a few hundred euros for the 10-year life of the file until its next renewal. Yes, you read that right: a few hundred euros for 10 years.
The work becomes more complicated and the cost increases if the monitoring is foreign or global, or if the trademark is registered in many classes of products and services (obviously, and for purely statistical reasons, the more similar results there are, the more personal filtering work is required, and the higher the costs). However, in most cases (which is probably yours), monitoring is not expensive.
Monitoring similar trademarks is a crucial component of your brand protection strategy. It's not just a matter of registering a trademark and forgetting about it; you need to be vigilant and act quickly in the event of potential infringements.
At Bamboo Legal, we have a team of lawyers specializing in patents and trademarks who will accompany you throughout the entire process, from the preliminary feasibility report to the trademark application, monitoring for similarities, and, if necessary, subsequent legal proceedings (such as filing oppositions).
If you need more information or assistance with monitoring your brand, please don't hesitate to call or write to us. We are here to help you protect what is yours.
