Trademark Registration in Spain — OEPM and EUIPO

What Is a Trademark?

A trademark (marca) is a sign capable of distinguishing the goods or services of one undertaking from those of another. It may consist of:

• Words (brand names, company names)
• Letters and numerals
• Logos and graphic devices
• Colours (in specific combinations)
• Three-dimensional shapes (product shapes, packaging)
• Sounds and melodies
• Holograms and multimedia marks (since the 2019 EU Trademark Regulation)

Spanish trademark law is governed by Ley 17/2001 de Marcas, as amended following the EU Trademark Directive 2015/2436.

Registration Routes for Spain

Route 1: Spanish National Trademark (OEPM)

Filed with the Oficina Española de Patentes y Marcas (OEPM), headquartered in Madrid. Protects the mark exclusively within Spain. Cost-effective if Spain is the primary or sole target market.

Key steps:

1. Trademark search to check for existing conflicting marks
2. Application filing (online via OEPM portal or through a representative)
3. Formal examination: OEPM checks formalities and absolute grounds (no generic marks, no marks contrary to public order, etc.)
4. Publication in BOPI (Boletín Oficial de la Propiedad Industrial) — 2 months for third-party opposition
5. Opposition period: Any holder of an earlier right may oppose within 2 months of publication
6. Registration if no opposition or opposition resolved in applicant’s favour
7. Certificate issued; protection from the filing date (not the registration date)

Typical timeline: 4–8 months without opposition.

OEPM fee (2025 approx.): EUR 157.17 for one class, EUR 62.87 per additional class (electronic filing discount available).

Route 2: EU Trade Mark (EUIPO)

Filed with the European Union Intellectual Property Office (EUIPO) in Alicante. A single EU trade mark (EUTM) registration covers all 27 EU member states simultaneously, including Spain.

Key steps:

1. Prior search at EUIPO (and optionally at national offices)
2. Online application at euipo.europa.eu
3. Absolute grounds examination by EUIPO examiners
4. Publication in the Official Journal of the EUIPO — 3 months for third-party opposition
5. Opposition period: Third parties may oppose within 3 months
6. Registration if no opposition or opposition resolved in applicant’s favour

Typical timeline: 4–6 months without opposition.

EUIPO fee (2025): EUR 850 for one class (online), EUR 50 for the second class, EUR 150 from the third class onwards.

Key advantage: One registration, uniform protection across the EU. Cost-effective compared to 27 separate national registrations. Particularly important for companies operating in multiple EU countries.

Key risk: One earlier conflicting mark anywhere in the EU can block registration or lead to invalidation in the entire EU. The “unitary character” principle means a successful opposition cancels the mark EU-wide. For marks with potential conflicts in one country but not others, a national route (or selective country-by-country approach) may be preferable.

Route 3: International Registration (Madrid System)

The Madrid Protocol (administered by WIPO) allows registration in multiple countries (180+ signatories, including the EU/EUIPO) through a single international application via the OEPM (as home office) or EUIPO.

Best for companies targeting multiple markets outside the EU simultaneously (e.g., UK post-Brexit, USA, China, Japan, Australia).

The process: File internationally via WIPO with a “basic mark” (existing Spanish or EU registration or application). WIPO transmits the application to each designated country, where national examination applies. Each country can refuse within 12–18 months; once approved, the mark is registered nationally in each country.

Classes of Goods and Services (Nice Classification)

All trademark applications must specify the class(es) of goods or services to be covered, using the Nice Classification (45 classes: 1–34 goods, 35–45 services). Trademark protection extends only to the registered classes and closely related areas.

Strategic class selection is important:

• Register in the classes where your goods/services actually fall
• Consider registering in adjacent classes where a competitor might try to block you
• For “defensive” registrations in classes where you have no current activity, use-it-or-lose-it revocation (caducidad por falta de uso) applies after 5 years of non-use

Opposition Procedure

Any holder of an earlier right (earlier registered trademark in the same or similar classes, earlier unregistered mark with prior use, company name, copyright) may oppose a new trademark application during the opposition window.

Opposition is assessed on:

• Identity or similarity of the conflicting marks (visual, phonetic, conceptual similarity)
• Identity or similarity of the goods/services
• Likelihood of confusion in the relevant public (including likelihood of association)

The OEPM or EUIPO conducts a cooling-off period (2 months) for the parties to negotiate, followed by a substantive examination if no settlement is reached. Either party may appeal the outcome to the OEPM Board of Appeal (OEPM) or EUIPO Board of Appeal (EUIPO), and further to the Spanish courts or CJEU.

Trademark Maintenance: Use Requirement

A registered trademark must be put to genuine use in the relevant territory within 5 years of registration (or 5 years after the end of an opposition period). Failure to use the mark in that period entitles third parties to apply for revocation for non-use (caducidad).

Use must be genuine: token use purely to preserve rights is insufficient. Use by a licensee counts if properly authorised. Use must be in the registered classes.

Trademark Enforcement in Spain

Civil Enforcement

Registered trademark holders may pursue infringers before the Juzgados de lo Mercantil for:

• Injunction (cese del uso)
• Seizure and destruction of infringing products
• Damages (applying the EC Damages Directive as implemented in Spain)
• Publication of the judgment at infringer’s cost

Urgent provisional measures (ex parte injunctions, seizure orders) are available and frequently used in counterfeiting cases.

Criminal Enforcement

Trademark infringement at commercial scale is a criminal offence under the Spanish Criminal Code. The IP units of the Policía Nacional and the Guardia Civil coordinate with brand owners on anti-counterfeiting operations, particularly at borders and markets.

Customs Recordal

Registering your trademark with Spanish and EU Customs (via the COPIS/IPCU system under EU Regulation 608/2013) enables customs officers to detain suspected infringing goods at Spanish ports and airports.

Frequently Asked Questions

Should I register nationally at OEPM or use the EUIPO? For companies operating primarily in Spain, the OEPM national route is cheaper. For companies with EU-wide activity or plans to expand across Europe, the EUTM at EUIPO provides better value. Many companies register both — EUTM for EU-wide protection and Spanish national mark as a fallback if the EUTM is later cancelled in Spain.

Can an unregistered trademark be protected in Spain? Yes, through the law of unfair competition (competencia desleal) and the doctrine of “notorious marks” (marca notoria). However, the burden of proof of prior rights and reputation is on the user, and protection is geographically and class-limited compared to registered marks. Registration is always recommended.

What happens if our preferred mark is already taken in Spain? Options include: negotiating a coexistence agreement with the existing holder, acquiring the existing mark, choosing an alternative mark, or challenging the existing registration (if it has not been used for 5+ years or was registered in bad faith).

Does our company name automatically give trademark protection? No. A registered company name at the Commercial Registry (Registro Mercantil) gives the right to use that name in commerce but does not automatically confer trademark rights. Separate trademark registration is required for trademark protection.

How do we protect our trademark in the UK after Brexit? Since 1 January 2021, UK marks are separate from EU marks. EUTM holders had their registrations automatically “cloned” into UK Comparable Trade Marks by the UK IPO. For new applications, separate EUTM and UK trademark filings are required. The Madrid Protocol can cover both the EU and UK in a single international application.