A trade mark is any sign the main function of which is to distinguish the goods and services of one undertaking from those of other undertakings. It also plays an important role in advertising and goodwill consolidation.

Rules on distinctive signs and on trade marks in particular, are effective and necessary instruments in the fields of business policy and consumer protection.

When introducing a good or service on the Spanish market, steps must be taken to ensure that the trade mark:
1. May be freely used;
2. May be registered; and
3. Has no negative connotations, i.e. it is commercially suitable.

Before marketing the good or service, a search should be conducted to determine whether an identical or similar mark has been registered previously for an identical or similar good or service, thereby possibly preventing the sign from being used in the territory.

After confirming that no prior third-party rights are being infringed, consideration can be given to the various procedures for obtaining registration in order to secure exclusive rights and prevent the mark from being used by other companies. Obtaining registration also involves checking that the mark is not generic, deceptive, descriptive or contrary to public policy or accepted principles of morality.

Since April 1996, the procedures through which a registration having effect in Spain can be obtained are as follows:

– National system
– International system: Madrid Agreement – Madrid Protocol
– Community Trade Mark

1. National trade marks
National trade marks are registered by the Spanish Patent and Trade Mark Office.These marks may consist of a large number of signs capable of being represented graphically, using words, names or surnames, signatures, numbers and number combinations, slogans, drawings, colours and three-dimensional shapes including their packaging.

Since the Trade Marks Law, Law 17/2001, of December 17, came into force, on July 31, 2002, the Spanish Office only examines ex officio whether any absolute grounds for refusal of registration apply (mainly, that the mark is not generic, misleading, descriptive or contrary to public policy) and no longer addresses relative grounds for refusal (the existence of identical or similar marks registered for identical or similar products, with the likelihood of confusion). Relative grounds for refusal are only considered where owners of earlier signs oppose the application filed for a certain trade mark.

The Spanish Patent and Trade Mark Office will not refuse trade marks ex officio based on relative grounds but shall perform a computer search to notify the holders of previous identical or similar signs, for informative purposes only, of the application, in case they are interested in filing notice of opposition.

In the last two years significant progress in the implementation of criteria consistent with the predominant systems in other European countries, (e.g. a higher level of protection granted to well-known trade marks) however, on-line trade mark filing, as contemplated in the eighth Additional Disposition of the Trade Marks Law, is not as yet available.

Trade mark registration is valid for ten years and can be renewed indefinitely for further ten-year periods; however the registration may lapse if the trade mark is not renewed, if it is not effectively used during an uninterrupted five-year period, or if it becomes generic or deceptive.

2. International system
The "International System" comprises the Madrid Agreement of 1891 and the Protocol to the Madrid Agreement of 1989 administered by the World Intellectual Property Organization (WIPO) with headquarters in Geneva.

It is important to point out that although known as the "International System", it is not strictly speaking an international registration but rather a system in which various national registrations may be obtained through a unified administrative procedure.

The applicant must designate the countries where he wishes to obtain protection. WIPO then proceeds to notify the national offices of the designated countries and if no oppositions are filed pursuant to the national laws of each of the countries concerned within one year (pursuant to the Agreement) or 18 months (pursuant to the Protocol), the trade mark will be registered.

This however is not an open system because it can only be used by natural or legal persons who are domiciled or who have a real and effective establishment in a country signatory to one or both of the above conventions and may, on the basis of a registration or application at the Trade Marks Office of such State, obtain an international registration effective in all or some of the countries of the Madrid Union.

The possibility of filing international trade ark applications in the Spanish language as of April 1, 2004 heralds a significant breakthrough for international trade mark protection.

The adoption of Spanish as the third working language of the Madrid Protocol (together with English and French), will surely promote commercial relations due to the internationalisation of Spanish companies abroad and to the attraction of international entrepreneurial activities to Spanish markets.

Said initiative will also be an added incentive for Spanish-speaking countries to join the Madrid System for the international registration of trade marks, offering their nationals the possibility of filing applications in their native tongue and an affordable and efficient way of obtaining and maintaining their trade marks.

The most relevant additions to the Madrid System are the United States of America, where the Protocol became effective on November 2, 2003, and the European Union, which ratified the Madrid Protocol on October 1, 2004.

The European Union’s accession to the Madrid Protocol is the first time that the EU as a regional body, adheres to a WIPO treaty. The extraordinary importance of said accession lies in the encouragement and development of economic activities and competition, and the improvement of the degree of integration and operation of the internal market.

3. Community Trade Marks
The main feature of the Community trade mark (CTM) is its unitary character. A single procedure and a single registration provide the owner of a trade mark with registered protection in the whole European Union, which as of May 1st 2004, includes ten new Member States: Estonia, Latvia, Lithuania, Czech Republic, Slovakia, Slovenia, Poland, Hungary, Malta and Cyprus.The Community trade mark covers a market of circa 500 million consumers with a single registration.

It is important to point out that the Community trade mark does not replace trade mark rights in each Member State.The national, international and Community trade mark systems coexist and in some cases complement each other.

The Community trade mark system provides a single registration which grants direct protection in all the Member countries of the European Union through a single application and a unitary procedure. Thus, rather than filing applications in each of the Member States where the relevant goods or services are to be offered, traders in Europe may obtain exclusive rights over the trade mark throughout the European Union with a single Community trade mark registration.

This system is open to virtually all companies the world over since any company domiciled or with an establishment in the European Union or in a country which is a party to the Paris Convention, or domiciled in a member state of the World Trade Organization, can obtain a CTM registration.

The Community trade mark is administered by the Office for Harmonization of the Internal Market (OHIM) which is based in Alicante, Spain.

The application may be submitted in any of the 20 official languages of the European Union, although the applicant is required to designate a second language (English, French, Spanish, Italian or German) which could become the language of opposition, revocation or invalidity proceedings.

The OHIM only examines marks on absolute grounds (i.e. it will check to ensure that the mark is not descriptive, generic, deceptive or contrary to public policy or accepted principles of morality in any of the European Union countries). It does not examine applications on relative grounds (i.e. it will not refuse registration "ex-officio" on account of the existence of any earlier trade mark applications or registrations in the European Union). It is up to the owners of these registrations to oppose the application, and disputes will be clarified before the OHIM. There are more than 4 million trade marks in the European Union and finding one which can be freely used and registered as a Community trade mark is therefore not always easy.

The main legal consequence of the Community Trade Mark system enlargement due to the adherence of ten new Member States is the automatic extension of all Community Trade Marks filed before May 1st 2004, (whether they have already been registered or not) to the territories of the new Member States, without any administrative intervention nor the payment of additional fees.

Extended CTMs may not be challenged based on absolute grounds for refusal (e.g. because the CTM is descriptive in Hungarian), however, the owners of earlier national rights in the new Member States may prevent the use of the extended CTMs in the territory covered by the right, provided that such rights were acquired in good faith before the date of accession and provided further that it is possible pursuant to the applicable national legislation.

As we mentioned in the previous section, the future adherence of the European Union to the Madrid Protocol will allow to interweave the CTM application procedure and the International trade mark registration System, enabling any citizen based in an E.U. State to protect its trade marks as a Community trade mark and also as an international registration in Member States of the Madrid Protocol.

Another important advantage of the Community trade mark is that no evidence of use is required to obtain registration, and use of a mark in any Member State is sufficient to maintain its validity. Once registered, a Community trade mark is valid for 10 years. This period can be renewed for further 10-year terms subject to the payment of the appropriate fee.

The Community trade mark confers its proprietor the right to prevent unauthorised third parties throughout the entire European Union from using signs that because of their identity with or similarity to the mark and the identity or similarity of the goods or services they cover could generate a likelihood of confusion. It is relevant to mention regarding infringement actions that measures against the violation of trade mark rights may be enforced in any Member State of the European Union. Community trade mark infringement actions are brought before Community trade mark courts, which are national courts designated by each of the Member States.

In this regard, we must mention Law 8/2003, of July 9, the Bankruptcy Reform Law (which modifies Law 6/1985 on the Judiciary), which designates the mercantile courts and the Alicante Provincial Court as first and second instance Community Trade Mark courts in Spain, respectively, making their jurisdiction extensive to these effects to the entire national territory.