TRADEMARKS

TRADEMARK SERVICES

General advice, prosecution and actions before trademark offices:

• Clearance searches and availability opinions
• Spanish and European Union trademark applications
• Answering office actions on international trademarks designating Spain or the EU
• Oppositions to Spanish and European Union trademarks
• Negotiation and drafting of coexistence agreements
• Invalidation and revocation of Spanish or EU trademarks
• Recordation of assignments and licenses

Dispute advice and litigation:

• Assessment of disputes and resolution strategies
• Drafting and answering cease and desist letters
• Out-of-court settlement negotiations and drafting of agreements
• Litigation before Spanish courts, acting for plaintiffs or defendants in proceedings related to trademark rights, including:
  • Trademark infringement
  • Cancellation and revocation of Spanish trademarks
  • Ownership disputes and bad-faith invalidation actions
  • Non-use cancellation actions
  • Unfair competition claims for confusion and passing-off
  • Appeals against decisions of the Spanish PTO
• Appeals to the General Court of the EU against EUIPO decisions

QUICK POINTS ABOUT TRADEMARKS

Spanish trademarks:

• Only formal requirements are examined prior to publication; absolute grounds are not checked at that stage.
• Opposition period: 2 months from publication date.
• Once the opposition period ends, both absolute and relative grounds of refusal may be notified simultaneously. Absolute grounds can be raised by the opposing party. Relative grounds are not examined ex officio.
• No cooling-off period in opposition proceedings. The applicant may request proof of use of the earlier mark.
• Decisions by examiners may be appealed before a legal officer and, if necessary, to the courts.

European Union trademarks:

• Applications are examined for formalities and absolute grounds of refusal.
• Once objections are resolved, the application is published.
• Opposition period: 3 months from publication date. Oppositions can be based on earlier EU trademarks or national rights in any EU member state.
• If an opposition based on a national right is upheld, the EU trademark application can be converted into national applications in the remaining EU member states, retaining the original priority date.