How To Register A Brand Name in Europe & Spain

1. Registering a trademark you use is not mandatory, but it is strongly suggested. If you do not register your brand name, you will not be able to prevent others from using it, or even from registering it in their name and preventing you from claiming it in the future, even if you created it before them.

2. Trademark rights are territorial. They only grant rights within the country where we have registered them. Spanish trademarks grant rights (exclusivity over a denomination) in Spain. Portuguese trademarks grant rights only in Portugal. EU trademarks grant rights throughout the EU (not in the UK anymore).

3. To have trademark rights in Spain, we can choose a Spanish trademark, which is processed through the Spanish Patent and Trademark Office, or an EU trademark, which is processed through the Intellectual Property Office of the European Union.

4. The brand registration procedure without suspensions or oppositions (“smooth registration”) usually lasts about five or six months, and its procedural milestones are application > publication > grant. Both in Spain and in the EU.

5. ES and EU trademarks have a duration of ten years from their application date, and can be renewed indefinitely.

6. Trademarks may be granted or refused.

7. Trademarks must be classified in relation to the goods or services for which they are to be used. Depending on the number of classes for which they are registered (there are 45 classes), more or less fees will be paid. Although it is common practice to register trademarks in many classes, reality and best practice reveal that 90% of trademarks should be registered in a maximum of three classes. Registering the mark in more is not only more expensive but also can attract greater problems in the future.

8. There are two main reasons for refusal of a trademark: absolute reasons, which can be assessed ex officio by the offices, and relative reasons, due to the existence of similar or identical trademarks or prior rights of third parties.

9. Absolute reasons are diverse, but they are detectable by the IP agent before filing the trademark in most cases. We speak of generic marks (“THE BREAD” to distinguish a bakery), descriptive, deceptive, containing non-appropriable public elements (the Olympic rings, a flag, etc.).

10. The relative grounds are, broadly speaking, that there is a similar prior trademark and with respect to which the trademark we are dealing with causes a risk of confusion in the public. This can be foreseen in 60-65% of the cases by means of a previous report of priorities. For our brand name to be refused, not only should there be an earlier similar trademark, but its owner must oppose the granting of our trademark at the corresponding office.

11. In the event that a trademark application is opposed by a third party, the procedure can take almost a year in total (ES trademark) or two years (EU trademark). An opposition initiates an adversarial proceeding in which each of the parties argues what is in its interest, and the office finally decides on the grant or refusal of the challenged mark. Appeals may be lodged and, subsequently, contentious-administrative appeals in the case of Spanish trademarks, and appeals at the Court of Justice of the EU in the case of EU trademarks.