Trademarks Briefing (Devices) - Spain

Please give details of the major acts and directives governing trademarks.

Ley de Marcas No 17/2001, de 7 diciembre 2001 (Trademarks Act No 17/2001, 7 December 2001) (transposed into law by Royal Decree 687/2002, of 12 July 2002 governs trademarks in Spain.

Under the Act:

• Several classes of goods and/or services can be covered under a single application.
• The Spanish Patent and Trademark Office Oficina Española de Patentes y Marcas (OEPM) no does not cite ex officio prior marks it considers to be similar to the mark being examined. Instead, the prior-right owners, which are considered by the Examiner to be similar to the junior mark, will be notified of the new application’s publication, so they have the opportunity to oppose it.
• Unless bad faith can be proved, a senior trademark owner who has acquiesced in the use and/or registration of a conflicting mark for five consecutive years may not thereafter object to the use and/or registration of the junior mark.
• An opposition may be filed on the basis of Article 8 of the Paris Convention, under which a trade name is protected without registration, whether or not it forms part of a trademark. However, opposition must be supported by proof of use or extensive reputation of the trade name.
• A provision for the exhaustion of rights was introduced.
• Well-known marks are clearly defined and granted broader protection.
• The concept of restitutio in integrum (re-establishment of rights) exists. Any party to proceedings before the OEPM are entitled, upon payment of a fee, to seek re-establishment of rights lost as a result of the non-observance of a time limit. Applicants must show that, despite having taken all steps that might reasonably have avoided non-compliance, they were unable to meet the deadline.
• Provision for the resolution of disputes between trademark proprietors by arbitration exists.
• It is possible, under certain circumstances, to place proceedings in suspense; eg, if an opposition is based on a pending application, the opposition proceedings can be held in abeyance until the outcome of the application.

Is your jurisdiction party to any international conventions on trademark protection? When did it join these conventions?

Spain is party to the following international conventions:

• WIPO Paris Convention for the Protection of Industrial Property 1883, since July 1884.

Spain is also party to European directives which govern the Community Trademark (CTM) system, these include:

• Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community Trade Mark. It is available at: http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2009:078:0001:0042:EN:PDF;
• Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trademark. http://oami.europa.eu/en/mark/aspects/reg/reg2868.htm.

Which are the major bodies responsible for assessing trademark applications and registering trademarks?

Trademark applications must be filed with either:

• the Autonomous Regional Government where the applicant is domiciled, or has its industrial or commercial establishment; or
• the Spanish Patent and Trademark Office Oficina Española de Patentes y Marcas (OEPM), when the applicant is not domiciled in Spain.

An applicant may also:

• apply for a European Community Trademark (CTM). This offers an applicant protection across all EU member states through a single application filed directly with the Office for Harmonization in the Internal Market (OHIM) (the trademarks and designs registration office of the European Union) or forwarded to OHIM by the OEPM together with a handling fee of €25. A CTM offers the same term of protection as that for a trademark registered in Switzerland – 10 years. A CTM can be renewed indefinitely for further 10-year periods. If the trademark is refused in one country, it will be invalid in all countries. Applications should be made via the OHIM CTM application: e-filing form, available from the OHIM website at: ttp://oami.europa.eu/ows/rw/pages/QPLUS/forms/electronic/fileApplicationCTM.en.do.
• apply to register its trademark through the international Madrid Protocol system which covers countries which have joined the Protocol. It is administered by the World Intellectual Property Organisation (WIPO) in Geneva. An application for international registration must be processed and forwarded to WIPO by the national IP office (the OEPM in this case). WIPO then checks the application, records the trademark in the International Register if all requirements are met, and publishes the registration in the ‘WIPO Gazette of International Marks’. Contracting states may refuse protection under their respective national legislation within one year (Madrid Agreement) or 18 months (Madrid Protocol). If protection is granted, the international registration holder has the same rights as an owner of a national trademark. If one country refuses the trademark, protection is still maintained in the other chosen countries. The term of protection of an international mark is 20 years under the Madrid Agreement and 10 years under the Protocol. It can be renewed indefinitely. Applications must be presented using forms issued by WIPO, which are available at http://wipo.int/madrid/en/forms/. General information on the Madrid system is available at http://www.wipo.int/madrid/en/.

What can be registered as a trademark? Under what circumstances will registration be refused?

Trademarks are awarded by the Spanish Patent and Trademark Office Oficina Española de Patentes y Marcas (OEPM) for products and services. Legal protection for distinctive signs as trade names is also available. A trade name is a title that grants the exclusive right to use any mark or name to identify a company involved in trading activity. Like industrial property rights, trade names are not the same as company names registered in Mercantile Registers. Distinctive signs are offered ten-years protection starting from the date the application was filed and can be renewed indefinitely upon payment of the appropriate fees. Different fees apply to trademarks while they are being processed.

Service marks can no longer be registered in Spain. However, previous service marks remain registered until expiry.

Under the Trademarks Act of 2001 a trademark can be registered if it consists of words (including names) or a combination of:

• Pictures;
• Letters;
• Numbers;
• Figures;
• Symbols;
• Three-dimensional forms (packaging, containers, product formats or representations);
• Graphics.

A trademark will be refused registration if it:

• is not capable of being graphically represented;
• not capable of distinguishing one businesses good or services from those of another;
• lacks distinctive character;
• consists solely of signs or indications which designate essential characteristics of goods or services;
• consists solely of signs or indications which are customary in the language in the trade;
• consists solely of the shape, arising from the goods themselves, or which is necessary to obtain a technical result, or gives substantial value to the goods;
• is contrary to public policy or morality;
• is deceptive;
• was applied for in bad faith;
• is prohibited by national of EC law; or
• is identical with or similar to an existing trademark in respect of identical or similar goods.

What is the procedure for registering trademarks? What are the key stages of the process? What fee is payable?

An application may be made either before the mark is put into use or afterwards. Generally speaking, an application should be made to register a mark as soon as possible to ensure priority over anyone else who applies to register the same or similar mark.

An application can be made by completing the application form (which is available from the Spanish Patent and Trademark Office Oficina Española de Patentes y Marcas (OEPM) website at http://www.oepm.es/cs/Satellite?c=Page&cid=1244099819601&classIdioma=_en_us&idPage=1244099819601&pagename=OEPMSite%2FPage%2FtplContenidoTodosFormularios&idPagAnterior=1244099819588&volver=SI) and lodging it with the OEPM. The fee for filing an application should be paid at the time of application.

The following documentation/information should be filed with each application:

• the details of the applicant;
• an address for service;
• a representation of the mark, no larger than 8x8cm;
• an indication of the type of mark applied for (collective mark, certification mark, series of trademarks, 3D mark);
• a statement of classes of goods or services for which protection is being sought;
• details on the use of mark;
• any claim to priority or disclaimer/limitation;
• the application fee;
• the details of an authorised agent.

Conducting a pre-application search is advisable in order to know whether a proposed mark is likely to conflict with an existing registered mark or pending application. Searches can be conducted in the public libraries of the OEPM. Searches can be carried out in person or in writing, a fee is applicable for each class of goods searched. Electronic searches can be carried out free of charge via the OEPM website. The use of a registered trademark agent is advised when conducting the appropriate searches and filing an application.

Upon receipt of an application, the OEPM will check it to ensure that certain minimum requirements have been met. The OEPM will conduct a computer search on each trademark or trade name application to detect possible situations of registration incompatibility with previous existing trademarks. If this search detects any subsequent application that may affect the applicant’s rights they will be notified by the OEPM; enabling them, if they consider it appropriate, to object to the registration of the requested trademark. Once satisfied, a filing date and application number will be assigned.

The application will then be examined in order to determine whether or not the trademark can be registered. If the application is accepted for registration, details of the mark will be published in the Boletín Oficial De La Propiedad Industrial (BOPI) (the Official Spanish Industrial Property Gazette). If any incidents arise during processing of the application or if the office intends to refuse registration, the applicant will be informed and given an opportunity to make arguments in support of the application or to amend their application. If the applicant fails to appease the arguments against registration, or the application has not been amended to fit the correct criteria, or if it fails to respond within a specified time, the application will be refused. An information manual for Trademark applicants is available to download from the OEPM website at http://www.oepm.es/cs/Satellite?c=Page&cid=1148395237564&classIdioma=_en_us&idPage=1148395237564&pagename=OEPMSite%2FPage%2FtplContenidoGestion&idGest=1149262847762&canal=CAN3&idPagAnterior=1144466654253 (in Spanish only).

If the application is successful, the applicant is notified of the issuing of the registration title for them to collect.

Once a trademark application has been published in the Official Gazette anyone can comment in writing on whether or not it should be registered. Comments must be submitted before the trademark is registered. These comments are passed onto the applicant by the OEPM.

Anyone who wishes to oppose an application must lodge a notice of opposition, along with the prescribed fee, within three months of the trademark application being published in the Official Gazette. At the end of the three months, a copy of any notices of opposition received are sent to the applicant who then has three months to file a counter-statement. An application will be withdrawn if a counter-statement is not filed.

If the mark is unopposed or overcomes opposition the OEPM then continues with registration.

Details of the statutory trademark fees payable for registration and renewal can be found at http://www.oepm.es/cs/Satellite?c=Page&cid=1149007422222&classIdioma=_en_us&idPage=1149007422222&pagename=OEPMSite%2FPage%2FtplContenidoInformacionGeneralCAN3&idInfo=1148916353552&canal=CAN3&idPagAnterior=1144466653890&volver=SI (in Spanish only).

What is the test for obtaining trademark protection?

A trademark can be registered, if it is a sign that can be represented graphically and is capable of distinguishing goods or services of one undertaking from those of other undertakings.

Unregistered trademarks are protected under the law of passing off; the mark’s proprietor must be able to demonstrate goodwill in the mark.

A trademark will not be registered if, for example:

• it is identical or similar to an earlier trademark and the goods or services for which the trademark is applied for are identical/similar to the goods or services for which the earlier trademark is protected, so that there exists a likelihood of confusion on the part of the public as to the origin of the goods;
• it is similar or identical to an earlier famous trademark so that the use of the later trademark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or reputation of the earlier trademark, even if the goods or services are dissimilar;
• it is contrary to any law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade;
• it is devoid of any distinctive character;
• it consists exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;
• it is contrary to public policy or morality, or if it is deceptive.

In order for a trademark to be registered it must satisfy the following legal conditions:

• be new;
• be capable of graphical representation;
• be capable of distinguishing goods or services of one undertaking from those of another;
• have inherent or acquired distinctive character;
• does not fall within excluded categories as specified by the law;
• is not confusingly similar to any third party registered or unregistered mark; or
• is lawful.

For how long is trademark protection given? Is it possible to gain extensions in protection?

A trademark registration is valid for ten years from the application date. This period may be extended for successive ten-year periods, upon payment of a renewal fee.

When is a registered trademark infringed?

A registered trademark is infringed when a third party uses, in the course of trade, and without the consent of the trademark holder:

• any sign identical to the trademark for identical products or services for which the trademark is registered;
• any sign identical or similar to the trademark, and identifying identical or similar products or services, which is misleading to the public; or
• any sign identical or similar to the trademark, which identifies different products or services, when the trademark is famous in Spain, and its use may lead to an unfair profit or damage to the earlier mark.

What is the process for enforcing brand or trademark infringement? On what grounds can a trademark owner bring an infringement action?

The Spanish Trademarks Act of 2001, applying article 6bis of the Paris Convention, grants rights to owners of well-known but unregistered marks similar to Spanish registered trademarks, including an opposition right against applications filed with the OEPM. Also the Act, applying Article 8 of the Paris Convention, grants owners of unregistered trade names the right to oppose trade mark or trade name applications provided that they provide evidence that the unregistered trade name is well known in Spain.

The Spanish unfair competition legislation is often used as a defence against the use in bad faith of signs which are identical or confusingly similar to unregistered trademarks or trade names.

In the case of registered trademarks, juicio ordinario proceedings begin by serving a statement of claim (demanda), which sets out the facts and legal grounds in support of the claim and attaches documents that support the claimant’s case.

A trademark litigation action must be brought in a mercantile court. The court usually declares within three to four weeks whether an action is admissible. If it is admissible, the court will serve the statement of claim on the defendant. The claimant must cite examples of the infringing acts in its first statement of case. The defendant must file its defence and any counterclaim within 20 business days of the statement of claim being served.

The defendant’s response usually includes a bare denial of infringement and, in some cases, a counterclaim to revoke the trademark on the grounds that it is invalid.

In practice, a typical case will last between 10 and 14 months, but much depends on the nature of the dispute and the relevant evidence, as well as the specific court’s workload.

Spain is a multilingual country and cases may be presented in any of the official languages (Spanish, Catalan, Basque and Galician). Parties can, however, insist that proceedings and documents be translated into Spanish.

What defences are available in trademark infringement cases?

The main defences open to a defendant in trademark infringement cases include:

• Non-enforceability of a mark in cases where it has not been used during the last five years;
• Use of registered marks. An owner must bring an application to have a mark removed from the register within five years. If the prior rights owner does not file an application the earlier mark’s owner is deemed to have acquiesced, unless the application for the latter mark was made in bad faith;
• Exhaustion of rights;
• Disclaimers or limitations;
• The mark not being identical to the prior registration;
• The mark not being confusingly similar;
• The defendant’s goods being different from those with prior registration protection;
• A lack of distinctiveness means the mark is seen as common property;
• Use of an earlier right;
• Use to identify goods or services as those of the registered mark’s owner or licensee;
• It has only been used for private purposes; or
• The mark was used before the owner applied for registration; therefore proof of use is needed.

What is/are the limitation period(s) for filing a trademark infringement claim?

Limitation periods are set by statute. The limitation period for trademark infringement proceedings is five years calculated from the date when the rights could first be initiated. The claimant can seek damages for all infringing acts occurring in the five years before proceedings start.

Limitation periods may be suspended in certain circumstances, for example, when a formal cease and desist letter is delivered by means of a public notary to the future defendant.

Under what circumstances can the registration of a trademark be revoked or removed?

A trademark can be revoked if:

• it has genuinely not been used in the course of trade in Spain for an uninterrupted period of five years in relation to the goods or services for which it was registered;
• it has become a generic term due to the trademark owner’s inactivity;
• it is deceptive or confusing to the public, for example as to the origin or nature of the goods;
• the owner no longer has the capacity to own a Spanish trademark;
• the owner acted in bad faith when filing the trademark application.

What remedies are available to the brand owner?

The remedies available for trademark infringement include:

• injunctions, with penalties for breach;
• damages – these would cover actual losses plus any lost profits. The level of damages will be calculated based on: the benefit foreseen by the claimant if the infringement had not taken place; the benefit obtained by the defendant through the trademark infringement; or a reasonable royalty basis. The claimant must choose one of these criteria. In assessing damages, two of the factors taken into account will be how well-known the trademark is and how prestigious its reputation is. Where a trademark’s reputation has been damaged, the circumstances of the infringement, the extent of the damage, and the degree of dissemination in the marketplace will be taken into account. The Trademarks Act also includes a provision where the owner of a trademark declared by the courts to have been infringed shall be entitled, without need for any proof, to receive as compensation 1% of the defendant’s turnover in the infringing goods or services. If the trademark owner can prove that the infringement caused greater damage it will be possible to claim a larger amount of compensation.
• seizure of infringing articles and the means of producing them;
• surrender or destruction of infringing goods; or
• publication of the judgment at the infringing party’s expense.

How does trademark law affect parallel imports?

Parallel importation occurs when goods which are sold in one market with the consent of the trademark owner are then imported into a second market without the consent of the trademark owner for resale.

As a member of the European Union, European law applies to parallel importation in Spain, in particular the two areas of law that are most relevant to parallel trade are EU intellectual property law and EU competition law.

Article 28 of the EC Treaty covers the free movement of goods, while Articles 81 and 82 deal with free competition.

Under Article 28 of the EC Treaty any quantitative restriction on trade (or measure having equivalent effect) between Member States is prohibited. Article 30 of the EC Treaty provides, where necessary, an exception, to protect intellectual property rights. Under Article 81 EC undertakings are prohibited from entering into agreements which are likely to affect trade between EU Member States, preventing, restricting or distorting competition within them. Restrictions which are in contravention of Article 81(1) are automatically void and unenforceable under Article 81(2). If, it can be shown that the benefits of an agreement outweigh its anti-competitive effect, it can be exempted under Article 81(3). In order to gain an individual exemption, the European Commission should be notified of the agreement or the agreement should be shown to comply with the terms of one of the block exemptions. If trade between member states is affected, firms are prohibited from abusing a dominant position and possessing excessive market power in the common market under Article 82 of the EC Treaty.

If the parallel importer has repackaged the goods in question in a reasonable manner, then trademark owners cannot use trademark laws to prevent rights cannot be used to prevent parallel imports from one member state to another within the European Economic Area (EEA). Pharmaceutical companies are particularly vulnerable to the commercial significance of repackaging which has resulted in a great deal of litigation and analysis on what constitutes reasonable repackaging, and what is the correct balance between the trademark owner’s rights and the free movement of goods as stated in Articles 28 and 30 of the EC Treaty.

Useful contacts

Oficina Española de Patentes y Marcas (Spanish Patent and Trademark Office)

Paseo de la Castellana, 75

28020 Madrid

Spain

Tel: [phone]

Web: http://www.oepm.es

Email: [email protected]

Boletín Oficial De La Propiedad Industrial (BOPI) (Official Spanish Industrial Property Gazette) - http://www.oepm.es/bopiweb/index.htm

Office for Harmonization in the Internal Market (OHIM) (the trade marks and designs registration office of the European Union)

(Trade Marks and Designs)

Avenida de Europa, 4

E-03008 Alicante

Spain

Tel: + 34 96 513 9100

Email: [email protected]

Web: http://oami.europa.eu/ows/rw/pages/index.en.do

World Intellectual Property Organisation (WIPO) - http://www.wipo.int