Registering a Trademark (OEPM and EUIPO): Steps and Renewal

A trademark is a sign (a word, a logo or a combination of both) that identifies your goods or services and distinguishes them from those of your competitors. Registration grants you an exclusive right, enforceable against third parties, to use that sign in the course of trade.

Any individual or legal entity can apply for a trademark. The right is not absolute over the name across every sector: it is limited to the classes of goods or services you designate in the application.

Protection lasts 10 years from the filing date of the application and can be renewed indefinitely for successive periods of 10 years. Without registration, defending the name against a third party is far more difficult.

A prior rights search means checking, before you file the application, that there is no identical or similar trademark already registered for the same goods or services. It is a key step: it reduces the risk of a third party opposing and of the application being refused. It can be checked in the official OEPM databases and in TMview, the EUIPO database.

Goods and services are grouped under the Nice Classification, which organises all economic activity into 45 classes: classes 1 to 34 correspond to goods and classes 35 to 45 to services. You must state which classes you want protection in, because the scope of the right is limited to those you designate.

Choosing the classes well is decisive. Extending them later requires filing a new application. The amount usually depends on the number of classes: you can see the current price on the service page for this procedure.

The application is filed online through the OEPM electronic office. A formal examination follows, checking that the application meets the requirements; if there are defects, you are given a period to correct them.

The application is then published in the Boletín Oficial de la Propiedad Industrial (BOPI, the Spanish Official Industrial Property Bulletin) and a period of 2 months opens. During that period, holders of earlier rights can file oppositions, and anyone can submit observations on the absolute grounds for refusal.

In the substantive examination, the OEPM examines of its own motion only the absolute grounds for refusal (for example, generic, descriptive or misleading signs). The relative grounds (conflict with earlier trademarks) are examined only if a third party files an opposition. If there is an opposition or any objection, you are notified so that you can file written submissions (alegaciones).

Finally, the OEPM issues a decision granting or refusing the trademark, which is published in the BOPI. It can be challenged by recurso de alzada (an appeal to the higher administrative body) within 1 month of publication. Where the opposition is based on an earlier trademark that had been registered for at least 5 years at the filing or priority date of the new application, the applicant can require the opponent to prove genuine use of that trademark.

If your business goes beyond Spain, a single application to the EUIPO protects the trademark in the 27 countries of the European Union. This is the European Union trade mark (EUTM), which has unitary character: it is granted for the whole territory of the EU or it is not granted at all.

The procedure includes the examination, publication in the European Union Trade Marks Bulletin and an opposition period of 3 months from publication. If someone files an opposition, a cooling-off period (periodo de reflexión) of 2 months opens so the parties can try to reach an agreement before moving to the adversarial stage.

The EUTM lasts 10 years from the application date and is renewed indefinitely for periods of 10 years, just like the national trademark. For countries outside the EU there is also the international registration route (the Madrid System): Managora handles that for you too.

A trademark lasts 10 years from the filing date of the application. To keep it alive you have to renew it, and you can do so as many times as you want, for periods of 10 years.

The ordinary renewal period is the 6 months before the expiry date of the registration. You can also renew up to 6 months after that date, but with a surcharge: 25% of the tasa (official fee) during the first 3 months and 50% during the following 3 months.

If it is not renewed within the deadline, the trademark lapses and the right is lost, with the risk that someone else registers the same sign. Renewal can be partial: you can renew only some of the registered classes. You can check the current amount on the service page for the renewal procedure.

Managora handles the whole procedure from start to finish. We run the prior rights search and the viability analysis, guide you in choosing the Nice classes and file the application with the OEPM or the EUIPO on your behalf.

We then track the progress of the file, respond to the office's objections and to third party oppositions, and we alert you and handle the renewal every 10 years in time so that you do not lose your trademark. The exact amounts, both for registration and for renewal, are kept up to date on the service page for each procedure.