Trademarks in Spain: procedures, examination and opposition – Commentary

The trademark registration system is established in articles 11 to 30 of the Trademark Act and in the complementary regulation.

An application to register a trademark must be filed before the Spanish Patent and Trademark Office (SPTO) or another competent body.

Once an application is filed, the SPTO will examine it for compliance with the formal requirements. If the application is admissible, the SPTO will publish the application in the Industrial Property Official Gazette and conduct an electronic search of earlier rights that may be incompatible with the application, based on relative grounds for refusal.

The SPTO will notify the owners of any potentially incompatible earlier rights that have been detected so that they may file an opposition if they consider it appropriate; however, the SPTO will not refuse an application ex officio due to the existence of an incompatible earlier right. Following publication, the SPTO will conduct an ex officio substantial examination of the application to determine whether:

• there are absolute grounds for refusal; or
• the application includes or comprises a name, surname, pseudonym or any other sign that identifies a person other than the applicant to the general public.

If no oppositions are filed and the ex officio examination raises no objections, the trademark will be registered and published in the Industrial Property Official Gazette.

If objections are raised in the substantial examination, the proceedings will be halted and the applicant will be notified accordingly. The applicant has one month from such notification to submit arguments in support of its application, or to withdraw, limit, amend or split the application. Regardless of whether the applicant responds, the SPTO will decide whether to grant or refuse registration, specifying the grounds for its decision.

If grounds for refusal exist only for some of the goods or services for which registration is sought, the refusal of registration will be limited to the goods or services at issue.

The grant or refusal of registration will then be published in the Industrial Property Official Gazette.

The applicant can contest the SPTO’s decision through an administrative appeal procedure within one month of its publication. In such case, the SPTO will review its decision to determine whether the administrative acts granting or refusing registration were performed in accordance with the law.

Publication of the trademark application triggers a two-month period during which any party that believes its rights may be damaged can file an opposition to the registration based on absolute grounds for refusal, and the holders of previous rights can file an opposition based on relative grounds for refusal.

The SPTO will notify the applicant of the opposition and give a one-month term to respond. The applicant can request proof of use from the owner of the earlier trademark in the course of the five years prior to the date of application or priority of the subsequent trademark. If in a one-month term the opponent does not provide any evidence or the evidence provided is insufficient, the opposition will be dismissed.

The SPTO will then decide whether to grant or refuse registration and publish its decision in the Industrial Property Official Gazette. Again, the decision may be appealed through an administrative appeal procedure within one month of publication.

Any unsuccessful party in an administrative appeal process before the SPTO may lodge an appeal before the contentious administrative courts within two months of publication of the SPTO’s administrative appeal decision in the Industrial Property Official Gazette.