Unregistered marks
Ownership changes and rights transfers
Related rights
Online issues
This article is part of a series on trademarks in Spain.(1)
Protection
The Trademark Act follows the principle that trademark rights come into existence upon valid registration under the Trademark Act. However, the owner of an unregistered well-known mark has the right to:
- file an opposition to an application for registration of a sign that is identical or confusingly similar to its own, for identical or similar goods;
- file a civil action to invalidate an identical or similar trademark registered for identical or similar goods; and
- file a civil action against the unauthorised use of the unregistered mark for identical or similar goods.
Use requirements
The Trademark Act makes no reference to use of the unregistered mark in Spain as a prerequisite for claiming protection. Hence, in principle, the Trademark Act requires only that the unregistered mark be well known in order to be protected.
Ownership changes and rights transfers
The Trademark Act does not require legalisation. Instead, the presentation of legalised documents is left to the applicant's discretion.
An object of copyright, a design protection or rights relating to the name or image of a person may also be protected as a trademark, provided that it fulfils the legal requirements.
The Trademark Act recognises that a registered rights holder has the exclusive right to use its trademark on interconnected communication networks and as a domain name.
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.
Endnotes
(1) For earlier articles in the series, please see:
- "Trademarks in Spain: legal framework";
- "Trademarks in Spain: ownership and protection";
- "Trademarks in Spain: procedures, examination and opposition";
- "Trademarks in Spain: removal of marks from register and searches"; and
- "Trademarks in Spain: enforcement".
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.