Scope of protection
Absolute grounds for refusal
Relative grounds for refusal or invalidation in case of conflict with identical or similar earlier rights
Definition of "earlier trademark"
Other prohibited signs
This article is part of a series on trademarks in Spain.(1)
Any natural or legal person, including public law entities, can obtain a Spanish trademark or trade name. A representative of the rights holder will need a power of attorney before filing. However, this does not need to be notarised or legalised.
The Trademark Act also sets out that if a person applies to register a trademark in breach of either third-party rights or a legal or contractual obligation, the aggrieved party may claim the ownership of the trademark before the Commercial Court, provided that the claim is brought before the registration date or within a period of five years from publication of the notice of registration or the time at which the trademark is first used in Spain.
Article 4 of the Trademark Act establishes the requirements for trademark registration. It provides that a trademark may be any sign that is capable of both distinguishing in the market the goods or services of one undertaking from those of others, and being represented in a way that enables the authorities and the public to determine the clear and precise object. The Act also provides a list of the following signs that may constitute trademarks:
- words, including personal names;
- figures, drawings, letters and colours;
- the shape of goods or their packaging; and
The following signs cannot be registered as a trademark:
- signs that are not registrable because they do not fulfil the requirements set out in article 4 of the Trademark Act;
- signs that lack distinctive character;
- signs that comprise exclusively signs or indications that serve in trade to designate the characteristics of the relevant goods or services;
- signs that consist exclusively of signs or indications that have become customary to designate the relevant goods or services in the current language, or in the in the bona fide and established practices of the trade;
- signs that consist exclusively of a shape or another feature that results from the nature of the goods themselves, which is needed to obtain a technical result or which gives substantial value to the goods;
- signs that are contrary to law, public policy or accepted principles of morality;
- signs that may deceive the public – for instance, as to the nature, quality or geographical origin of the relevant goods or services;
- signs excluded from registration under Spanish law, EU law or international agreements to which the European Union or Spain is a party conferring protection to designations of origin and geographical indications;
- signs excluded from registration under EU law or international agreements to which the European Union is a party conferring protection to traditional terms for wine and to traditional specialities guaranteed;
- signs that consist of, or reproduce in their essential elements, the denomination of a previous plant variety, registered in accordance with the legislation of the European Union or national law, or the international agreements to which the European Union or Spain is a party, which establish the protection of plant varieties and which refer to plant varieties of the same or closely related species;
- signs that include or imitate the coats of arms, flags, decorations or other emblems of Spain, its autonomous communities, its towns, provinces or other local entities, unless the appropriate consent has been given;
- signs that have not been authorised for use by the competent authorities and that are to be refused pursuant to article 6ter of the Paris Convention; and
- signs that include badges, emblems or coats of arms other than those covered by article 6ter of the Paris Convention, which are of public interest, unless the appropriate authorities have granted consent to the registration.
Relative grounds for refusal or invalidation in cases of conflict with identical or similar earlier rights
The following signs may not be registered as a trademark:
- signs that are identical to an earlier trademark, where registration is sought for identical goods or services; and
- signs that are identical or similar to an earlier trademark, where registration is sought for identical or similar goods or services and there is a likelihood of confusion on the part of the public, including the likelihood of association with the earlier trademark.
Definition of "earlier trademark"
An "earlier trademark" is defined to include:
- Spanish registered trademarks, trademarks registered internationally and effective in Spain and EU trademarks, with a filing or priority date that precedes the trademark application;
- registered EU trademarks, which under the EU Trademark Regulation constitute a valid claim to seniority over Spanish registered trademarks or trademarks registered internationally and effective in Spain, even if they have been surrendered or have lapsed;
- trademark applications that fall under the above categories, subject to their final registration; and
- unregistered trademarks that are well known in Spain on the filing or priority date, pursuant to article 6bis of the Paris Convention.
The Trademark Act also prohibits the registration of the following:
- signs that are identical to an earlier trade name, designating activities which are identical to the goods or services for which registration is sought; and
- signs that are identical or similar to an earlier trade name, where registration is sought for goods or services identical or similar to the designated activities and there is a likelihood of confusion on the part of the public, including the likelihood of association with the earlier trade name.
The Trademark Act sets out relative grounds for refusal or invalidation in the case of a conflict with identical or similar earlier registered trademarks and trade names that are well known in Spain or in the EU. The protection afforded to such marks is extended beyond the principle of speciality. This is when a trademark application will be refused even if the goods or services for which registration is sought are dissimilar to those for which an identical or similar well-known mark is registered. This reinforced protection applies if the use of the later mark might suggest a connection between the goods or services covered and the owner of the well-known mark, or in general where such use, without due cause, would take unfair advantage of, or be detrimental to, the distinctive or well-known character or reputation of the earlier mark.
Further grounds for refusal or invalidation are provided in cases of other related early rights such as the name, surname, pseudonym or image of a person, copyright, unauthorised registration by an agent or representative, and company names, geographical indications and designations of origin in certain circumstances.
For further information on this topic please contact Sonia Santos or Jesús Arribas at Grau & Angulo by telephone (+34 93 202 34 56) or email ([email protected] or [email protected]). The Grau & Angulo website can be accessed at www.ga-ip.com.
This article first appeared in World Trademark Review Yearbook: A global guide for practitioners 2021/2022, a supplement to World Trademark Review, published by Law Business Research - IP Division. To view the guide in full, click here.
(1) For the first article in the series, please see "Trademarks in Spain: legal framework".