SPAIN Law and Practice Contributed by: Marina Gómez, Arochi & Lindner
• it is represented in the Register of Trade Marks in such a way as to enable the com - petent authorities and the general public to determine the clear and precise subject mat - ter of the protection granted to its proprietor. Distinctiveness must be assessed in relation to the particular goods or services for which regis - tration is sought. In addition, the assessment of distinctiveness must take into account the per - ception of the relevant public targeted by those goods or services. Trade marks which have become distinctive through use before the date of granting of reg - istration will not be refused. In order to prove acquired distinctiveness, the following evidence is relevant: • a computer-based market survey that pro - vides information about the degree of knowl - edge of the mark, the market share it has, and the position it occupies in the market; • marketing, advertisements and promotional material demonstrating the trade mark’s vis - ibility, intensity and reach; • a list of all the current worldwide registrations of the mark; and • representative invoices (ideally from key clients). 2.3 Trade Mark Rights Article 34 of the TM Act sets out the rights con - ferred on trade mark owners. These rights are linked to the validity of the trade mark in ques - tion. The main rights conferred on the proprietor of a trade mark are as follows: • registration of a trade mark will confer on its proprietor exclusive rights therein; • the proprietor of such registered trade mark will be entitled to prohibit any third party from
using, without their consent, in the course of trade, an identical or similar sign for identical or similar goods or services; • the proprietor of that registered trade mark will also have the right to prevent third parties from bringing goods into Spain in the course of trade, without the goods being released for free circulation, in the case of goods (includ - ing their packaging) which come from third countries, and which bear without authorisa - tion a trade mark identical to the trade mark registered for those goods or which cannot be distinguished in its essential aspects from that trade mark; and • the proprietor of a registered trade mark may prevent traders or distributors from remov - ing that trade mark without the proprietor’s express consent. 2.4 Use in Commerce In order to prove use of a trade mark, four factors must be proven by the evidence as a whole, in respect of the goods and services for which the trade mark is registered: • place; • time; • extent; and • nature of use. Infringement is deemed to have occurred when the defendant uses a registered trade mark with - out the authorisation of its owner or licensees in connection with the sale or offering of goods or services, and in such a manner as to confuse the users of such goods or services. 2.5 Notices and Symbols In Spain, the right over the trade mark is acquired by registration. Therefore, use of the symbols ® (registered) and MR (registered trade mark) is not compulsory and does not provide further
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