Trademark registration in Spain

Spain, with its favorable geographical location, rich culture, and open economic policy, has been becoming an attractive destination for investors and businesses worldwide. Spain is a bridge between Europe and North Africa, facilitating trade and the transportation of goods. With a long coastline, Spain has many major seaports, facilitating the development of the shipping and tourism industry. As a member of the European Union, Spain benefits from the single market, uniform policies and financial support from the EU. The use of the Euro helps to minimize forex risks and facilitates trade transactions. With its warm climate, beautiful beaches, and rich cultural heritage, Spain is one of the world’s top tourist destinations. The tourism industry contributes a significant portion to Spain’s GDP and creates many jobs. Spanish cuisine is known for its diversity and unique flavors, Spain is one of the largest wine-producing countries in the world, with a wide range of famous wines. Therefore, the vigorous development of tourism soybeans creates a great demand for local food and beverage products. Spain is a potential market for brands. However, to be successful, you need to have a suitable marketing strategy and understand the local market – one of which is trademark registration and brand development, Viet An Law would like to guide you through the preliminary procedures for trademark registration in Spain through the article below.

Legal Basis

• Trademark Law No. 17/2001 of December 7, 2001 (as amended by Royal Decree – Law No. 23/2018 of December 21, 2018)

Definition of Trademark in Spain

According to Spain’s Trademark Law No. 17/2001 (and subsequent additional amendments), a trademark is a special sign used to distinguish and personalize products or services in the market, making it easier for consumers to identify and differentiate them from similar products or services of other businesses. At the same time. The trademark also clearly identifies the origin of the product or service.

Benefits of Trademark Registration

• Trademark Recognition: Trademarks help consumers remember and recognize the products or services of a particular company.
• Build loyalty: A strong trademark builds customer loyalty to a product or service.
• Intellectual property rights protection: A trademark is an intellectual property protected by law, helping businesses prevent counterfeiting and counterfeiting trademarks.
• Improve trademark value: Trademarks have great value in building the image and reputation of businesses in the market.

Types of trademarks that can be registered in Spain

• Trademarks of goods and services: The most common type of trademark, used to distinguish specific products and services.
• Collective trademark: A trademark used by members of an association to indicate that their products or services meet certain standards.
• Assurance Mark: It is a mark used to certify that products or services meet certain quality standards.

Guide to Trademark Search in Spain

To search for a trademark in Spain, customers will mainly use the database of the Spanish Office of Industrial Property (OEPM) via the link below:

https://www.oepm.es/en/herramientas/buscador-base-de-datos/buscador-marcas-y-nombres-comerciales

Instructions for the search steps:

• Access the OEPM database: Please visit the OEPM website and look for the trademark search engine.
• Select search criteria: Customers can choose to search by:
  • Name or keyword: Enter the exact or similar keyword you want to find.
  • Image: Upload an image of your trademark ‘s logo or logo.
• Review the results: After the results are available, carefully review information such as:
  • Similarity: Compare the trademark you find with the trademark you want to register.
  • Type of goods or services: Check if the products or services match.
  • Geographic coverage: Consider where the trademark has been registered.
  • Likelihood of confusion: Assess whether there is a possibility that consumers will confuse the two trademarks.

Note: To narrow down your search, you can use a combination of keywords (AND, OR, NOT), Wildcards (*) and specific search fields.

Trademark Registration Filing in Spain

• Trademark Registration Application: The applicant completes and accurately fills in the following information:
  • Name and address of the applicant (individual or business)
  • Trademark type (word, logo, image, etc.)
  • A detailed description of the trademark (meaning, color, typography, etc.)
  • List of goods or services according to the Nice classification system
  • Application Fee
• Trademark Templates: Two clear and easily visible copies of the trademark printed on a white background. If the trademark is colorful, a clear note should be made.
• Identification documents:
  • A copy of the applicant’s identity card or passport (if it is an individual).
  • Business registration certificate or business license (if it is an enterprise).
• Power of attorney (if applicable): If the applicant hires an attorney or legal representative to file the application, a valid power of attorney is required.
• Additional documents (if any): If the trademark has special elements, the applicant needs to provide explanatory or illustrative documents. For example, if the trademark is a complex logo, the applicant can provide technical drawings.
• Fee receipt: Customers can refer to the fee schedule via the link below: https://www.oepm.es/en/marcas-y-nombres-comerciales/como-proteger-las-marcas-y-nombres-comerciales/tasas/

How to file a trademark registration dossier in Spain

To file a trademark protection application in Spain, you can file by the following filing methods:

• Direct filing: Customers can go directly to the Spanish Industrial Property Office (OEPM) at Paseo de la Castellana 75 28046 Madrid to submit the application and related documents.
• By post: You can send the application and all the necessary documents through the postal service or courier service to the Spanish Industrial Property Office (OEPM) at Paseo de la Castellana 75 28046 Madrid.
• Submit online via OEPM’s system: https://sede.oepm.gob.es/eSede/es/index.html

Trademark Application Processing Process in Spain

Filing a Trademark Registration Application

Any individual or organization has the right to file an application for trademark or trade name protection in Spain through the Spanish Electronic Office of Intellectual Property (OEPM) to distinguish its products and services.

Publication of application

Once the application is formally finalized, it will be widely published in the Official Industrial Gazette. Within two months from the date of publication, any person or organization has the right to file an objection or give an opinion.

Filing Objections and Third-Party Opinions

Previous owners of related rights, if they believe that their rights have been infringed by a new trademark application or trade name, have the right to file a complaint.

Content appraisal

After the end of the period for receiving feedback from third parties, the application will be carefully reviewed to ensure full compliance with the provisions of the Trademark Law. If any violation is detected or there is a reasonable objection, the applicant will be required to supplement the information or make amendments.

Proof of use

In case of receipt of an opposition based on a previously registered trademark or trade name, the applicant has the right to require the opposing party to prove the actual use of their trademark or trade name, as long as the prescribed conditions are met.

Grant or denial of registration

The review and decision process will be carried out objectively based on legal grounds and relevant evidence. The final decision will be published in the Official Industrial Gazette, allowing stakeholders to appeal within a month.

Trademark Protection Registration in Spain through the Madrid System

The Madrid System is a convenient and cost-effective solution for global trademark registration and management. File a single international trademark application and pay a one-time fee to register protection in up to 130 countries. Applicants can modify, renew or expand their global trademark portfolio through a centralized system.

Madrid Agreement:

• Spain joined the Treaty of Madrid on 15 July 1892
• The Madrid Agreement allows trademark owners to register their trademarks in a single member state (the “country of origin”) and then extend protection to other member states (the “designated country”) through a single international application.

Madrid Protocol:

• Spain acceded to the Madrid Protocol on 1 December 1995
• The Madrid Protocol modernizes and simplifies the international trademark registration system established under the Madrid Agreement.
• The Madrid Protocol allows trademark owners to designate additional member states to an international application already filed under the Madrid Agreement or the Madrid Protocol.

Trademark registration dossier under the Madrid System

The Madrid application includes the Madrid application of Vietnamese origin and the Madrid application with Spanish designation.

For Madrid Applications of Vietnamese origin, the applicant must file through the state management agency for industrial property rights, i.e. the National Office of Intellectual Property of Vietnam. According to Article 25 of Decree 65/2023/ND-CP, a Madrid application originating from Vietnam includes the following documents:

• Declaration of request for international registration of a trademark of Vietnamese origin (Form No. 01 in Vietnamese in Appendix II of Decree 65/2023/ND-CP);
• 02 MM2 declarations according to the form of the International Office in English or French;
• 02 trademark samples are exactly the same as the trademark in the registration application filed in Vietnam (basic application) or the trademark registration certificate (basic registration);
• 02 MM18 declarations in English (if the application has a US designation);
• Power of attorney in Vietnamese (According to the form of Viet An Law Firm);
• Receipts of payment of fees for carrying out procedures for international registration of trademarks originating in Vietnam;
• Other relevant documents (if necessary).

Fees for filing through the Madrid System

Fees include:

• Basic fee (653 Swiss francs; or 903 Swiss francs for a color trademark) (Note! A 90% discount applies if the applicant files at the Intellectual Property Office of a developing country at least); and

The additional fees depend on where the applicant wants to protect his trademark and the number of groups of goods and services the applicant wants to cover. In order to expand its geographical coverage, or modify or renew its international registration, the applicant will have to pay additional fees.

Trademark registration services in Spain by Viet An Law Firm

• Perform the search and notify the customer in writing of the result of the trademark search in Spain;
• Drafting dossiers and directly filing and monitoring the status of trademark registration applications in Spain on behalf of trademark owners;
• Notifying, advising and handling deficiencies/refusals of competent State agencies (if any) in the process of monitoring trademark applications in Spain;
• Assist in monitoring and representing the resolution of objections and feedback to the intellectual property representative carrying out the procedure in Spain.
• Receive official dispatches, certificates and hand over to customers (if any).

If you want to file a trademark registration application in Spain, please contact Viet An Law for the most effective support