DISTINCTIVE SIGNS
"It should be pointed out that the SPTO does not perform an examination of trade mark and trade name applications with respect to prior registrations and applications unless an owner files opposition to the application. For this reason, before applying for a trade mark or trade name, it is advisable to perform a search which includes an expert report evaluating the risk of infringing third parties’ rights. Our firm has a qualified team of Industrial Property Attorneys and skilled lawyers with a broad experience in providing advice, preparing, filing, prosecuting and defending applications for the registration of distinctive signs."
Spanish Trade Mark Law No. 17/2001 of December, 7 grants three types of protection for distinctive signs in Spain:
1. TRADE MARKS.
Their basic features are:
Protectable subject matter: any sign being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor to distinguish in the market the goods or services of a company, of those of others. Thus, for instance, protectable signs may consist on:
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Words or a combination thereof, including the names of people.
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Images, figures, symbols and drawings.
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Letters, numerals and combinations thereof.
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Colors.
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The form of the product or its packaging.
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Sounds.
Classification: goods and services are classified in 45 Classes under the Nice International Classification.
Prosecution: the trade mark application is examined for formalities by the Spanish Patent and Trademark Office (SPTO) and subsequently published in the Official Bulletin of Industrial Property (BOPI) for a period of two months to allow any person with a legitimate interest to oppose its registration. Once the opposition period has elapsed, the SPTO carries out an examination to decide whether the trade mark fulfills the requirements for its registration and informs the applicant of any oppositions or objections received, giving a period of time to file allegations in reply and to request proof of the use of opposing trade marks when the trade marks are subject to obligation of use. In the event that the opponent files evidence demonstrating the use of the opposing marks, the applicant then will have the possibility to present his observations in reply, after which a decision is taken grating or rejecting the trade mark application.
Duration: 10 years from the filing date of the application, renewable for additional periods of 10 years without limitation
2. TRADE NAMES.
Their basic features are:
Protectable subject matter: any sign susceptible to graphic representation which identifies a company in the course of trade and distinguishes it from other companies that carry out similar or identical activities. Thus, the following may be protected, for instance:
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People’s names, company names and the names of legal entities (for example, public limited companies or limited liability companies).
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Fanciful names.
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Denominations referring to the object of the business undertaking.
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Anagrams and logos.
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Images, figures and drawings.
Prosecution: the application is examined by the Spanish Patent and Trade Mark Office in respect of formal requirements and, afterwards, it is published in the Industrial Property Official Gazette, opening a term of two months, allowing third parties to file opposition. Once the opposition term has ended, the SPTO carries out an examination to decide whether the trade name fulfils the requirements for registration and all objections and oppositions are reported to the applicant giving him a term to reply to the oppositions received or the objections raised by the SPTO, after which a decision is taken to grant or reject the application.
Duration: 10 years from the filing date of the application, renewable for additional periods of 10 years without limitation.
3. ESTABLISHMENT NAMES.
This modality has been eliminated by the Trade Mark Law as of 31/7/2002. Those establishment names filed beforehand will cease to exist after the period for which they have been granted or renewed.
Their main features were:
Protectable subject matter: any sign or name which serves the purpose of identifying an establishment to the public. Thus, the following may be protected, for instance:
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People’s names, company names and the names of legal entities.
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Fanciful names.
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Denominations alluding to the object of the activity of the undertaking.
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Anagrams.
Scope of protection: the municipal area or areas in which the establishment or its branches are located.
Duration: 10 years from the filing date of the application, renewable until 30/7/2002 for additional periods of 10 years. From 31/7/2002 until 31/1/2003 it was possible to apply for the renewal of existing Establishment Names for a period of 7 years (until 31/7/2009)
Extra-registral protection of definitively cancelled establishment names: For 20 years after the cancellation from the register, the owner of an establishment name may:
a) Oppose the use of a later identical trade mark or trade name that distinguishes the same activities in the municipal district where the establishment name is protected.
b) This right will be eliminated if the owner of the establishment name knowingly tolerates later trade mark or trade names for five consecutive years.
c) This right will be eliminated before the 20 years ends, if the establishment name registration stops being used for a period of 3 consecutive years.
