SPAIN Law and Practice Contributed by: Mario Sol Muntañola, Javier Márquez Martín, Ferran Llaquet Ballarín and Ana Padial, Sol Muntañola Abogados
Reputed trade marks benefit from enhanced protec- tion even if not registered in Spain. In line with the Spanish Trade Mark Act, protection extends beyond identical or similar goods or services where the use of a later sign may take unfair advantage of, or be detrimental to, the distinctive character or reputation of the earlier mark. 2.3 Trade Mark Registration System Trade mark registration has a constitutive effect, meaning that it confers exclusive rights on the trade mark owner upon registration. On the one hand, it grants a positive right to use the sign exclusively in the course of trade. On the other hand, it provides a nega- tive right to prevent third parties from using identical or similar signs without consent, including both direct acts of infringement and preparatory acts. Applications are filed before the Spanish Patent and Trade Mark Office (OEPM). The procedure includes a formal examination, publication for opposition pur- poses, during which third parties may file oppositions within two months from publication, and a substantive examination. In the absence of objections or oppo- sitions, registration is typically granted within six to eight months. The cost of filing a trade mark application includes official fees and professional fees, which may vary depending on the number of classes and the com- plexity of the case. By way of indication, official filing fees before the OEPM are approximately EUR125–150 for one class, with additional fees for each extra class. In this regard, multi-class applications are allowed, enabling applicants to seek protection for different goods and services within a single application, which can be more efficient from both a procedural and cost perspective. 2.4 Term, Use and Maintenance Trade mark protection is granted for a period of ten years from the filing date and may be renewed indefi- nitely for successive ten-year periods. Renewal is subject to the payment of the corresponding official fees and must be requested within the six months pre- ceding the expiry date. A grace period of six months is available after expiry, in cases where the mark has not been renewed in due time, subject to a surcharge.
Use of the trade mark is not required for registration, but it becomes essential for maintaining the rights. A mark must be put to actual use in Spain within five years following registration. This requires real use in the market, not merely symbolic, in relation to the goods or services for which the mark is registered, within the relevant territory, and in a manner that allows consumers to identify the commercial origin of those goods or services. If the trade mark is not put to actual use within this period, or if such use is suspended for an uninter- rupted period of five years, it may be subject to can- cellation for non-use. This may result in the loss of rights in respect of all or part of the goods or services for which the mark is registered. 2.5 Trade Mark Rights and Limitations Registration confers on the trade mark owner the exclusive right to use the sign in the course of trade and to prevent third parties from using identical or similar signs for identical or similar goods or services where there is a likelihood of confusion. In particular, these rights include affixing the mark to goods or their packaging, placing goods or services on the market under the mark, and using it in advertising. Protec- tion may also extend to cases where use of a later sign takes unfair advantage of, or is detrimental to, the distinctive character or reputation of the earlier mark. Trade mark rights are not absolute and are subject to certain limitations. The proprietor cannot prevent third parties from using, in the course of trade, their own name or address (where the third party is a natu- ral person), or signs that lack distinctive character, or the mark, where necessary, to indicate the intended purpose of a product, such as accessories or spare parts, provided such use complies with honest com- mercial practices. The principle of exhaustion also applies, meaning that the trade mark owner cannot oppose the use of the mark in relation to goods that have been previously placed on the market in the European Economic Area by the owner or with its consent.
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