01 Purpose and duration

1. What is a trademark? What is a trade name?

Trademarks and trade names are distinctive signs protected by certificates that are granted by the state, thereby giving the owner the exclusive right to use them in the course of business and preventing others from using protected distinctive signs in Spain. A trademark is a sign that allows business owners to distinguish their products or services from the goods or services of competitors. A trade name is a sign or name that identifies a company in commercial trade and serves to distinguish it from other companies that engage in identical or similar business activities.

2. What are the main obligations of an owner of a trademark and trade name?

To obtain protection, the trademark or trade name must be registered. An owner has the obligation to use the trademark or trade name, either himself through a person authorised by the owner. If these signs are not used, the courts may declare them expired.

3. How does a trademark differ from a trade name and from a business name or corporate name?

A trademark distinguishes the goods or services of a business owner.

A trade name is a sign or name that identifies a company in commercial trade and serves to distinguish it from other companies that engage in identical or similar business activities.

A business name is a name that identifies a legal person as subject to legal relationships, and therefore susceptible to rights and obligations.

It is not necessary for a trade name to match the business name, and therefore a trade name other than the business name may be chosen. If they so wish, a single natural or legal person may have several trade names to identify business activities belonging to different sectors in the course of trade.

Thus, a manufacturer of trousers would register the name used in its manufacturing business activities as the trade name, to distinguish itself from other business owners. Its business name is the one that it must use, for example, to sign contracts or to register employees with the social security system. The sign or name that the manufacturer uses to market those trousers will be the product's trademark. All these signs may be the same or different, at the business owner's choice and as appropriate.

Similarly to a natural person, the business name would be the "civil name" of the natural person, while the trade name would be the "artistic name" used by that person to introduce himself to his clients in the market.

4. How does a trademark differ from a domain name?

A domain name is the Internet address that can be obtained from the Entidad Publica Empresarial Red.es (www.nic.es) in the case of '.es' domain names. Whenever a name that conflicts with a trademark is registered, legal protection may be obtained either in court or through the arbitration system established by the World Intellectual Property Organization.

Second-level domain names under '.es' will be assigned based on the order in which application was submitted. Domain names that have been previously assigned cannot be applied for. Syntax rules also have to be met, and they cannot include reserved terms included in a series of lists (Internet terms and terms related to national or international institutions), pursuant to the corresponding legislation.

At the third level, domain names can be assigned under the following indicators: '.com.es', '.nom.es', '.org.es', '.gov.es' and '.edu.es'. These third-level domain names will be assigned based on the order in which the application was submitted. Domain names that have been previously assigned cannot be applied for. When assigning domain names with the 'gov.es' and 'edu.es' indicators, compliance with the legitimation requirements laid down in current legislation in force will first be verified, as well as compliance with syntax rules. Third-level domain names under the '.com.es', '.nom.es' and '.org.es' indicators also have to comply with syntax rules, and they cannot include reserved terms included in a series of lists (Internet terms and terms related to national or international institutions), pursuant to the corresponding legislation.

The registration of domain names under .com, .org and .net is not subject to any type of preliminary check. They are assigned following the principle of 'first come, first served', and are registered through the ICANN, which has its registered address in California.

5. How does a trademark differ from an industrial design?

A trademark is a sign that serves to distinguish goods or services, and may include two-dimensional and three-dimensional shapes. An industrial design is an exclusive right granted over the aesthetic appearance of a product, and it has requirements that are different to those of a trademark. Two-dimensional shapes (for example, the pattern on a tie) and three-dimensional shapes (for example, the shape of a suitcase, the body of a car) are susceptible to protection.

6.For how long is a trademark or trade name granted?

Ten years as from the application date. At ten years, the trademark and/or trade name must be renewed. A trademark and/or trade name may be renewed indefinitely.

The SPTO will give you sufficient advance notice of deadline expiry. It is important that you notify the SPTO of any change of address. We recommend that you provide an e-mail address as the preferred method of notification, given the speed at which you will be notified.

7. How much does it cost to obtain a trademark or trade name in Spain?

The cost for recording a trademark or trade name payable to the SPTO in 2012* is 138.94€ for the first class applied for, and 90€ for the second and subsequent classes.

By applying for a trademark or trade name on-line through the SPTO's electronic office(https://sede.oepm.gob.es/eSede/es/index.html), you have a right to receive a 15% reduction of the indicated fees.

To keep these rights, renewals have to be paid every ten years. The amount of these fees is updated every year through the General State Budgets Act, and the amount is shown on the SPTO's web page (www.oepm.es), so it is advisable to check the website to confirm the amount payable.

8. What are the requirements to obtain a trademark or trade name?

A sign to be registered must be lawful, viz., it must not be subject to any of the prohibitions laid down in law, and it must be available, meaning that it does not conflict with any prior rights, whether as a trademark or other exclusive right, such as the right to a name, an intellectual property right, etc.

Information on the interpretation of legal requirements for registration of trademarks by the SPTO may be obtained at http://www.oepm.es/es/signos_distintivos/marcas_nacionales/Guia_examen_prohibiciones_registro/.

* May 2012

9. Will the existence of prior rights always be a reason for refusing a trademark or trade name?

In some instances, the registration of a trademark or trade name similar to prior ones may be obtained when the goods, services or activities distinguished are sufficiently dissimilar, such that they would not lead to error or generate a likelihood of association. For example, DULCILIA, granted to distinguish 'blankets' in class 24 would not prevent registration of the same name to cover a 'periodic publication' in class 16. This so-called 'principle of speciality' does not apply when it concerns reputed or well-known trademarks. Reputed and well-known trademarks enjoy legally reinforced protection. For example, 'CAMPOFRKO' could not be granted for 'alcoholic beverages' in class 32, given its notoriety in the food sector, even though it does not have this notoriety regarding beverages.

The SPTO does a computer search of prior marks with respect to each new application, and sends a notice to the applicant or owner of prior registrations for merely informative purposes so that they can file a challenge if they so wish. If this does not happen, the SPTO cannot sua sponte refuse a new application because of being similar to an earlier right.

10. What can be the object of a trademark?

In particular, the following signs or means may constitute a trademark:

a) Words or combinations of words, including those that serve to identify people (for example, 'DULCILIA' for distinguishing goods or services or 'El Juli' as an artistic name).

b) Images, figures, symbols and graphics; for example, the representation of a horse with its front legs up that distinguishes Ferrari cars, or a crocodile for Lacoste clothes.

c) Letters, figures and combinations thereof; for example, BBVA, Licor 43 or S-3.

d) Three-dimensional shapes, which would include wrappers, packages and the shape of a product or its presentation.

e) Sounds.

f) Any combination of the signs or means mentioned as an example in the preceding sections.

11. What cannot be the object of a trademark?

The law lays down a series of prohibitions: • Signs that do not have sufficient capacity to distinguish; for example, a dot or a line without any other characterising element • Generic and specific signs; for example, chocolate to distinguish 'chocolate'. Those that are composed exclusively of signs that, in trade or in common language, may have come to constitute a necessary or usual name of the good or service in question; for example, 'spring rolls' to distinguish food products • Descriptive signs: those that exclusively comprise signs or indications that serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of a good or of the rendering of a service or other characteristics of a good or service. For example 'Select edition' or 'May strawberries' • Misleading signs, such as 'Oleoliva' to distinguish all kinds of edible oils and fats • Signs that are against the law or public order, for example any xenophobic or sexist trademark • Shapes that are imposed for technical reasons or due to the nature of the goods themselves or that affect their intrinsic value. For example, the representation of a satellite dish to distinguish satellite dishes or the representation of a windshield wiper for windshield wipers, or the representation of a pencil holder without any fancy or whimsical element • Certain signs that are legally protected, such as flags or shields of countries or autonomous communities, etc.

02 Procedure

12. How do you apply for a trademark or trade name?

An application is submitted in person or through a representative or an Industrial Property Agent at the Spanish Patent and Trademark Office (SPTO) or at the corresponding services of autonomous communities, at post offices (in a blank envelope, by registered post and with acknowledgement of receipt), at government offices and bureaux, at industry and energy agencies or electronic on-line application, accessed through the SPTO's web page (www.oepm.es).

13. What role does an Industrial Property Agent play regarding trademarks and trade names?

In exchange for professional fees, the agent offers his services to advise, assist or represent an applicant in obtaining trademarks or trade names and in defending and keeping the rights resulting from the same.

14. Is it mandatory to act at the SPTO through an Agent?

It is only mandatory for those who do not have residence or a reliable and effective establishment in any EU country.

15. What does a trademark or trade name application have to record?

The application must record:

• An application form

• Regarding trademarks that contain graphic elements, a reproduction of the same must be attached or printed. If the trademark is three-dimensional, the reproduction of the same will consist of a two-dimensional graphic or photographic reproduction

• Optionally or where it concerns a three-dimensional trademark, when the reproduction of a trademark is deemed not to show its details sufficiently, a description of the same

• The application fee

16. What are the essential elements that must be recorded in a trademark or trade name application in order to obtain a filing date?

The application must at least record:

• A declaration requesting the registration of a trademark

• Identification of the applicant

• The name of the trademark or trade name when it concerns a simply denominative trademark or trade name, or a design of the trademark or trade name if they are graphic or composite

• The goods or services to which the trademark will apply, or the business activities in the case of a trade name

• The application may be completed later, but the filing date will be the date when at least the aforesaid elements were presented

17. Can the application and other documents be submitted in languages other than Spanish?

Yes. Those submitted at offices of the autonomous communities may be drafted in their official languages other than Spanish, but they have to be accompanied by the corresponding translation into Spanish, which will be considered authentic in the event of any doubt between both texts.

However, those applications that are submitted directly at the headquarters of the SPTO must be drafted in Spanish.

18. Can information about the status or processing of a trademark or trade name be requested from the SPTO?

Yes. The SPTO will respond to questions that are related directly to the applications. It is also possible to consult the status of a file through the web page: www.oepm.es ('File status'). If the procedures have been conducted through an industrial property agent, said agent will be the representative before the SPTO.

19.In what order does the SPTO deal with trademark or trade name applications?

The SPTO processes and examines applications in strict order of presentation.

20. What is the priority date?

It is the date on which a trademark application was first applied for in any country of the world that adheres to the Paris Convention (see point 16).

In accordance therewith, the priority date extends to the six months after a validly obtained filing date.

21. Can the SPTO give information about the registrability of a trademark or trade name?

Yes. The SPTO has a search service whereby relevant information may be obtained about the registrability of a sign. However, such a report does not pre-suppose the decisions that the SPTO may adopt if a trademark application is filed to protect the sign in question or if a court has to decide.

Likewise, there is a trademark locator at the SPTO website (www.oepm.es), which may be accessed free of charge.

22. Can changes to a trademark or trade name application be made on a date after submitting the application?

At the applicant's request, the trademark application may only be amended to correct their name and address, errors of wording or copying or obvious mistakes, provided that such correction does not substantially change the trademark or extend the list of goods or services.

23. Can a trademark be made public before the application is filed?

Yes, but it is advisable to apply for the trademark before disclosing it in order to prevent a third party from filing an identical or similar application first.

24. What happens if the deficiencies in an application are not corrected within the deadlines established by the SPTO?

The application will be deemed to be totally or partially withdrawn, depending on the nature of the deficiencies in question.

25. If you have decided to protect your trademark, is it important to submit an application as soon as possible?

Yes. An application filing date is thus obtained before another application that may be subsequently submitted.

03 Searches

28. Is it advisable to request a priority search of trademarks before submitting an application?

Yes. Before submitting an application, it is advisable to do a search for trademarks or trade names that were applied for or registered earlier and that distinguish identical or similar goods or activities, thereby obtaining an idea on the probability of trademark registration.

29. If no equal or similar trademark or trade name is found in the search, can I be sure that the application will be granted? And if the trademark or trade name starts to be used, can I be sure that other trademarks or trade names will not be infringed?

No. The search for equal or similar trademarks or trade names applied for or granted earlier can serve to obtain fairly extensive knowledge of what has been protected, but it cannot guarantee that the trademark or trade name is going to be granted or that the rights of third parties will not be violated if a trademark or trade name starts being used.

04 Protection abroad

30. Is a trademark or trade name granted in Spain protected abroad?

No. The sign is only protected in Spain.

31. How can a trademark be protected abroad?

Protection abroad is obtained in several ways:

1. DIRECTLY, country by country, by filing the corresponding applications in each country where you want to register the trademark.

2. Through an INTERNATIONAL TRADEMARK. Through this procedure, regulated by the Madrid Agreement and in the Protocol thereof, protection can be obtained in up to 85 countries by filing a single application atthe SPTO, to be forwarded to the International Office of the WIPO (Geneva), whereby registration will have the same effects as if the application had been submitted in each of the designated countries. After the application is received at the WIPO, it is sent to the designated countries, where the national processing begins. The application may be granted or refused independently in each country.

The duration of this registration is 10 years, renewable indefinitely.

3. Through a COMMUNITY TRADEMARK.

This procedure is regulated by the Community Trademark Regulation, which establishes the possibility of obtaining protection in all EU countries through a single application, which may be submitted at the SPTO or the OHIM in Alicante, at the applicant's choice.

The Community Trademark is unitary in nature, and it produces the same effect in the entire EU. The registration lasts for 10 years and may be renewed indefinitely.

05 Ownership and transfer

32. Can a trademark or trade name be applied for on behalf of a company?

Yes. The applicant must be a natural or legal person. A multitude of persons can also be owners.

33. Can a trademark or trade name application be sold or transferred?

Yes. The rights over an application or a trademark or trade name may be transfered by all means recognised by law. Acts of transfer must be registered with the SPTO to be effective before third parties.