Protecting your brand and trademark in Spain

Key rules

• Spanish trademark: It suits a business that operates only in Spain and wants a cheaper, simpler route.
• EU trademark: One earlier right in a single member state can block the whole EU application.
• Opposition: After publication, owners of earlier rights have a two-month opposition period.
• Duration: Protection lasts 10 years from filing.
• Fees: Fees depend on the number of classes, so choose your classes carefully.

Which one should you choose?

Choose a Spanish trademark if you sell only in Spain. Choose an EU trademark if you sell, or plan to sell, in several EU countries or online across the EU.

Spanish trademark. You file with the OEPM. It costs less, the route is simpler and it is faster. It is only exposed to earlier rights that matter in Spain.

EU trademark. You file with the EUIPO. One registration covers every EU member state. It costs more than a Spanish mark, but far less than filing separately in each country.

The catch is that an EU trademark is a single right. It is granted, transferred, renewed and cancelled as a whole. An objection based on an earlier right in just one member state, or a sign that is not distinctive in one language, can block the whole application. If that happens, you can convert the application into national applications in the other countries.

Some businesses file both. A Spanish mark can also be the base for extending protection abroad through WIPO.

Before you choose, run a clearance search for earlier marks. The checklist below walks you through it.

What the fees depend on

Fees depend on the number of classes of goods and services you cover, and on whether you file electronically.

• OEPM: a basic fee for one class, plus an extra fee for each additional class.
• EUIPO: a base fee for one class, a lower amount for the second class, and a higher amount for each class from the third on. Electronic filing is cheaper.

Both offices revise their fees from time to time. Ask the OEPM or the EUIPO for the current figure for your number of classes before you file.

How a Spanish registration works

1. File with the OEPM, online or on paper. Name your sign and the classes of goods and services, and pay the fee per class.
2. The OEPM checks your application. It looks at the formalities and at reasons for refusal. Descriptive or generic signs are refused.
3. Your application is published in the official trademark bulletin, the BOPI.
4. The opposition period runs. After publication, owners of earlier rights have a two-month opposition period.
5. Grant and registration. If nobody opposes, or you win the opposition, the OEPM grants the mark, publishes the grant and registers it.

Protection lasts 10 years from filing, and you can renew it.

An unopposed application typically takes 6 to 9 months from filing to grant. An opposition, an objection or a suspension can stretch that to a year or more.

Choosing the right classes

Pick the classes before you file. Each class is a category of goods or services, and each extra class adds to the fee. Cover what you actually sell now and what you realistically plan to sell soon. Leave out the rest.

Choosing between options

Should you register a Spanish trademark or an EU trademark?

• Spanish trademark: You operate only in Spain and want a lower cost and a simpler, faster route. It is only exposed to earlier rights relevant in Spain.

• EU trademark: You sell or plan to sell in several EU countries or online across the EU. It costs more than a Spanish mark but far less than separate filings in every country.

• Both: You want the EU cover but also a Spanish mark that stands if the EU application is opposed over a right in another country.

Pick the Spanish mark if you stay in Spain; pick the EU mark if you sell across the EU and a clearance search shows no earlier rights in any member state. Fees rise with each class at both offices.

Check the current fees with the OEPM and the EUIPO.

Timeline and deadlines

• File the application with the OEPM, online or on paper, naming the sign and the classes of goods and services, and pay the fee per class: at the start

• The OEPM checks formalities and reasons for refusal, such as descriptive or generic signs: after filing

• The OEPM publishes your application in the official trademark bulletin (BOPI): once the checks are passed

• Owners of earlier rights can oppose your application: during the two-month opposition period from publication

• The OEPM grants, publishes and registers the mark: if there is no opposition, or it is resolved in your favour

Checklist

• Run a clearance search for earlier marks before you choose between a Spanish and an EU trademark.

• Decide whether you sell only in Spain or in several EU countries, to pick the Spanish or the EU route.

• List the classes of goods and services your sign must cover, since fees depend on the number of classes.

• Ask the OEPM or the EUIPO for the current fee for your number of classes and for electronic filing.

• Check that your sign is not descriptive or generic, as the OEPM refuses these.

• File online or on paper with the OEPM, or with the EUIPO for an EU trademark, and pay the fee per class.

• Watch the publication of your application and the two-month opposition period that follows.

What to watch out for

• One country can block the whole EU trademark: An EU trademark is granted or refused as a whole. An earlier right in any single member state, or a lack of distinctiveness in one language, can defeat the entire application. Run a clearance search first. If it is refused over one state, convert it into national applications in the other states.

• Descriptive or generic signs are refused: The OEPM refuses signs that only describe or name your product. Choose a distinctive name and check it before you file.

• Opposition or objections can delay registration: An opposition, objection or suspension can push the grant to a year or more instead of 6 to 9 months. Do not plan a launch or print packaging around a date before the mark is granted.

Frequently asked questions

What happens if my EU trademark is refused because of one country?

If an EU trademark is refused over one member state, you can convert it into national applications in the other states. An earlier right in a single country can block the whole EU application, so a clearance search first saves you from this.

Can I file both a Spanish and an EU trademark?

Yes, some applicants file both, so a Spanish mark still stands if the EU application is opposed over a right elsewhere.

Do trademark fees depend on the number of classes?

Yes, both offices charge by the number of classes of goods and services you list, and electronic filing is cheaper at the EUIPO. The EUIPO charges less for a second class and more for each class from the third on.