THE TRADEMARK PROCESS
An overview of a trademark application and maintenance process in Spain
Selecting a Mark
Selecting a mark is the very first step in the overall application/registration process. This must be done with thought and care, because not every mark is registrable with the Trademark Authorities. Because all of the above are very important, we help you with these steps, as well as the overall application process.
In Spain, a trade mark is registered after examination of the application in respect of registrability per se and eventually as to previous rights, after an opposition procedure.
Before filing an Spanish or Community trademark application, we always study the registrability of the mark, and we search in the relevant Registries to determine whether anyone is already claiming trademark rights in wording/design that is similar and used on related goods/services through a trademark registration. In our preliminary report, we consider:
- Whether the mark you want to register is registrable, and
- How difficult it will be to protect your mark based on the existence or not of prior rights (prior trademarks, designs, trade names…).
Submission of the application and work with the TM Office
We prepare and file your trademark application taking into account the precise goods and services to which the mark will apply, with a costs sensitive approach.
Throughout the entire process, we monitor the progress of your application through our system. It is important to check the status of your application after the initial filing of the application, because otherwise you may miss a filing deadline. Indeed, after expiration of the pe riod for filing opposition the Spanish Patent and Trademark Office undertakes an examination of the application in respect of registrability of the application. If objections were raised a notice thereof will be published, and applicant must then reply to the objections within one month from that publication.
Receive approval/denial of your application
If the application encounters no problem in the course of its prosecution, it may currently be expected to mature to registration in four to six months. If, however, it meets with some official objection or opposition, the decision on the case will normally be given in some eight to twelve months.
The exclusive right to a mark is effective from the date of publication of the grant of its registration. A Certificate of registration is issued by the authorities, as a proof of the protection of your mark.
Maintainance of your trademark registration.
Trdemarks in Spain are granted for 10 years from the date of the application. After that period, you may renew your application, in order to avoid the loose of the rights over the same.
We monitor the status of your mark in our system thought the entire life of the mark. It is particularly important to check the status of your mark periodically to keep your registration alive, informing you of the relevant deadlines.
Protecting Your Rights
You are responsible for enforcing your rights if you receive a registration, because the Spanish TM Office or the OHIM (Eurpean TM Office) do not “police” the use or registration of other similar marks.
The owner of a TM registration is responsible for bringing any legal action to stop a party from using an infringing mark, or registering any other similar mark.
Our Watch Service, attempts to ensure that no other party receives a registration for an identical or similar mark for or as applied to related goods/services. How can we do that? We watch your trademark in the registries to detect any newly filed trademark applications, notifying you of potentially conflicting marks, so that we can file oppositions thereto.
We also provide Web Watch Services, to uncover the most relevant results in a vast sea of web content, identifing any infringement of your mark.