Trade mark and IP lawyers in Spain
You have built a name and now someone else is using it, has registered it before you, or has filed an opposition against your trade mark at the OEPM (the Spanish patent and trade mark office). Our trade mark lawyers review what you actually own, measure what can be proved and choose the route: administrative action before the OEPM or the EUIPO (the EU intellectual property office), or court action before the commercial division of the Tribunal de Instancia (the Spanish first instance court). In industrial property almost everything runs on one and two month deadlines, so the first thing we check is the date you were notified.
What we handle
An opposition has been filed against your trade mark
We answer the opposition before the OEPM and require the opponent to prove genuine use over the last five years (art. 21.3 of Trade Mark Act 17/2001); if they cannot, the opposition falls away and your mark is granted.
Someone registered your name before you did
Bad faith invalidity action before the OEPM, which has had administrative jurisdiction since 14 January 2023, or by counterclaim if litigation is already under way. It is not time barred by acquiescence (art. 51.1.b of the Trade Mark Act).
A dormant mark is blocking your registration
Revocation action for non use to clear the obstacle: the burden of proving genuine use over the last five years falls on the owner, not on you (arts. 39 and 54.1.a of the Trade Mark Act).
Someone is selling under your brand
Court action for an injunction, recall and damages before the commercial division of the Tribunal de Instancia, with interim measures from day one, or the EU Trade Mark Courts in Alicante if the mark is an EU registration.
Your product is being copied and nothing is registered
With no registered mark or design the route is the Spanish Unfair Competition Act 3/1991, for confusion or free riding on another's effort. The window is short: one year from when the action could first be brought.
An agency is claiming over a photo on your website
We challenge ownership, whether the image is a protected work or a mere photograph, and the real amount of damage, which is not the tariff on the letter you received (arts. 128 and 140 of the Spanish Copyright Act).
Your brand is now somebody else's domain name
Domain recovery through the Red.es out of court procedure for .es names or ICANN's UDRP for .com, with transfer in weeks and no litigation.
How we work on it
We start with what you own and since when, because the priority date decides almost everything. Then we look at whether the conflict can be won administratively, which is faster and cheaper: opposition, invalidity or revocation before the OEPM or the EUIPO. We go to court only when a sale has to be stopped or damages recovered, and there we assess interim measures before filing. If you are being copied with nothing registered, the route is unfair competition, with a one year window that should not be allowed to run out. In every case we first review what use you can prove with invoices, catalogues and advertising, because in trade mark disputes evidence of use decides more matters than argument does.
Your matter is quoted after the consultation, because every case is different. The consultation fee is credited in full against the engagement if you go ahead.
Frequently asked questions
An opposition has been filed against my mark. How long do I have?
One month from the day the OEPM publishes the provisional refusal, and it cannot be extended. In that same submission it is usually worth requiring the opponent to prove use of their mark if it has been registered for more than five years, because many oppositions collapse at exactly that point.
Should I register in Spain or across the European Union?
It depends on where you sell and where your competitors come from. A Spanish mark covers Spain only and costs less; an EU mark covers all twenty seven countries, but a single earlier right in any one of them can bring the whole application down. We assess this before anything is filed.
I am being copied and my brand is not registered. Can I still act?
Yes. With no registration the route is unfair competition, arguing confusion or free riding. The window is shorter than for trade marks: one year from when the action could be brought and three from the conduct itself, so waiting is expensive.
How much does it cost to have you take the matter on?
The matter is quoted after the initial consultation, once we know what is registered and what can be proved. The consultation is 100 euros for thirty minutes or 200 euros for one hour, and it is credited in full against the engagement if you then instruct us.
Law firm guides on this area
The dispute explained: what action lies, what deadline is running and what has to be proved.
- Your trade mark has been opposed: demand proof of use
- Someone registered your brand first: nullity for bad faith
- A dormant mark is blocking you: apply for its revocation
- They are selling under your mark: injunction and damages
- They are copying your product and you never registered it
- A claim over a photo on your website: what is really owed
- Your brand is now someone else's domain: how to recover it