Defending your trademark: opposition, suspension, nullity, revocation and monitoring (OEPM)

When someone applies for a trademark, the OEPM publishes it in the Official Industrial Property Gazette (BOPI). From that publication you have 2 strict months to file an opposition (art. 19 of Ley 17/2001, de Marcas). Owners of earlier trademarks or trade names and their authorised licensees can oppose, invoking relative grounds for refusal (likelihood of confusion, renowned trademark, other earlier rights). Absolute grounds for refusal (generic, descriptive, deceptive or unlawful signs) can be invoked by anyone who considers themselves harmed.

The opposition is formulated through a reasoned and documented written submission, and is only considered filed if the tasa (official fee) is paid within the deadline: €37.52 electronically or €44.14 on paper, according to the OEPM fee schedule in force since 1 April 2026. A well founded submission identifies your earlier right, delimits the conflicting goods or services and argues the similarity between the signs and the relationship between the classes.

Keep in mind a rule that surprises many owners: if your trademark has been registered for more than 5 years, the applicant can demand that you prove the genuine use you have made of it in the previous 5 years (art. 21.3 LM). If you do not prove this use or justify its absence, the opposition based on that trademark is dismissed. Therefore it is advisable to provide invoices, advertising and real market presence from the start.

Managora studies the published application, assesses your chances according to the similarity of the signs and the class relationship, drafts the opposition and submits it to the OEPM within the deadline. You can see the updated amount in the trademark opposition procedure file.

The suspension is the communication with which the OEPM informs you of the objections affecting your own application: formal defects, absolute grounds detected ex officio or oppositions and observations from third parties (art. 21 LM). It is not a denial: it is your opportunity to defend the application.

The deadline to reply is 1 month from the publication of the suspension in the BOPI for national trademarks; for international trademarks designating Spain, the deadline is between 2 and 4 months as published by the OEPM (art. 21 of the Regulation, RD 687/2002). If you do not reply or correct the defects in time, you are deemed to have withdrawn totally or partially, or the application is denied.

In the reply you can do more than make written submissions (alegaciones): withdraw, limit, modify or divide the application to save the unaffected part, and even exclude non distinctive elements from protection if the objection is based on letters b), c) or d) of art. 5.1 LM. And if the suspension is caused by the opposition of a third party whose trademark has been registered for more than 5 years, you can demand that they prove the genuine use of that earlier trademark: if they do not prove it, their opposition falls.

Replying to the suspension does not incur a tasa (official fee). You would only pay the modification tasa (official fee) (€20.11 electronically or €23.65 on paper) if, upon replying, you decide to modify or limit the application. Managora studies the notification, chooses the strategy (submit arguments, limit or divide) and files the reply on time: consult the trademark suspension reply file.

Yes. Since 14 January 2023 the nullity of a Spanish trademark is requested directly before the OEPM through administrative channels (reform introduced by Real Decreto-ley 23/2018), without needing to go to court initially. It is a faster and cheaper procedure than the judicial one and does not require a procurador (court representative).

There are 2 types of nullity. Absolute nullity (art. 51 LM) applies when the trademark was registered in breach of absolute grounds or applied for in bad faith, and the action is imprescriptible: it can be exercised at any time. Relative nullity (art. 52 LM) applies when the trademark clashes with earlier rights (your trademark, your trade name, other rights), and here limitation by tolerance operates: if you have tolerated the use of the later trademark for 5 consecutive years knowing about it, you lose the action, unless the trademark was applied for in bad faith.

The procedure begins with a reasoned and documented written submission and the payment of the tasa (official fee): €170 electronically or €200 on paper. The OEPM forwards it to the owner of the challenged trademark, who has 2 months to submit observations, and there can be several rounds of written submissions (alegaciones) between the parties (arts. 59 LM and 61 of the Regulation). The challenged owner can also demand proof of use of your earlier trademark if it has been registered for more than 5 years.

The declared nullity has retroactive effects: the registration is considered to have never been valid. Managora studies the viability of your case, gathers the evidence (bad faith, earlier rights, likelihood of confusion) and submits the nullity request to the OEPM on your behalf: the amount is in the trademark nullity action file.

Every registered trademark must be used effectively and genuinely in Spain. If in the 5 years following registration it has not been used for the protected goods or services, or if its use has been suspended for 5 uninterrupted years, any natural or legal person who considers themselves harmed can request its revocation before the OEPM (arts. 39, 54 and 58 LM). There are other less frequent causes: the trademark has become generic due to the owner's inactivity, it has become deceptive, lack of renewal or surrender.

The great procedural advantage is the burden of proof: it is the owner of the attacked trademark who must prove that they truly use it (art. 59.3 LM), with invoices, catalogues and advertising with date and place. You do not have to prove a negative fact. If the owner does not prove use or justifying causes, the trademark is revoked for the affected goods or services.

The application is submitted to the OEPM with the same tasa (official fee) as nullity: €170 electronically or €200 on paper. The action does not prescribe, although it only succeeds against trademarks that have already been registered for at least 5 years. The effects of revocation occur, generally, from the date of the revocation request.

It is the typical tool to clean up the register: for example, when an inactive trademark blocks yours or when its owner opposes your application without using the trademark they invoke. Managora prepares the application, submits it electronically and follows the file until the resolution: consult the trademark revocation request file.

Because since Ley 17/2001 the OEPM does not automatically deny new applications for being similar to earlier trademarks: it only examines absolute grounds ex officio. If no one opposes within the 2 month deadline, a trademark practically identical to yours can be registered, and removing it later requires a nullity or revocation, which are longer and more expensive procedures than opposition.

The OEPM may send purely informative notices to owners of earlier signs detected in a computer search, but that notice is not guaranteed, does not cover all cases and does not interrupt any deadline. The opposition deadline runs from publication in the BOPI, whether you find out or not.

Managora's trademark monitoring service continuously monitors the BOPI. If an application identical or similar to your trademark appears, we notify you immediately with a risk analysis, so that you can decide in time whether to file an opposition within the 2 month deadline. You can contract the monitoring from the registered trademark monitoring service file.

In the registration procedure, the OEPM resolves to grant or deny the trademark, totally or partially, and publishes the resolution in the BOPI. Against dismissive resolutions, an appeal (recurso de alzada) can be filed within 1 month (Ley 39/2015), with its corresponding tasa (official fee) (€76.39 electronically, €89.86 on paper).

In nullity and revocation procedures, the final resolution of the OEPM produces effects against everyone. Furthermore, Ley Orgánica 7/2022, of 27 July, attributed the ultimate review of these resolutions to the civil jurisdiction (the specialised Sections of the Provincial Courts), and not to the contentious administrative one.

The law also coordinates the routes: if the validity of the same trademark is already being discussed before a court, the OEPM suspends its procedure, and vice versa (art. 61 bis LM). That is why it is advisable to define the complete strategy before triggering the first action: opposition if you are within the deadline; nullity if there was bad faith or a clash of rights; revocation if the opposing trademark is not used. Managora proposes the right combination for your case.