Comprehensive trademark consulting



When operating in any mercantile activity, it is crucial to indicate the business origin of the products and services marketed with the purpose of guaranteeing the consumer or the end user that the trademark fulfills its goodwill of a free competition system. The registration of a trademark confers an exclusive and exclusionary right of use to distinguish all the products and services for which the trademark has been registered in the country or countries where the applicant has sought protection and where registration has successfully been obtained.

UNGRIA is the Spain´s top distinctive signs filer before the Spanish Patent and Trademark Office (SPTO) and the Spanish leader of active files before the World Intellectual Property Organization (WIPO). UNGRIA controls at present over 87,000 active distinctive signs files.

The fields in which we can advise you, are the following:


UNGRIA provides advice on the best type of protection for the newly adopted distinctive sign that identifies your goods, services and company. We will also let you know, if your earlier trademarks are well protected in those countries to which you export or intend to export your goods or provide your services.

Our aim is to provide your trademark with the highest level of exclusivity, which, once granted, will help your company’s assets grow, thus directly impacting on the goodwill and consequently on the value of the company itself.


In the section “Private Area”, you may directly search the registration background of the term you wish to register as a trademark. This will also allow you to become aware of other trademarks or trade names that are identical or similar in one or several classes and that may prevent the chosen term from being registered in Spain.

Our databases are fully and comprehensively updated with all filed and registered trademarks and other distinctive signs having legal effects in Spain (Spanish trademarks and trade names, European Union trademarks, International trademarks designating Spain).

However, we advise you to complete your search by asking UNGRIA for a professional report advising you as to its viability.


Using the data and any other relevant information obtained through the aforementioned search, UNGRIA’s trademark attorneys will prepare a professional report for you on the registration viability of the chosen trademark. The report is based on the findings of the registration background and the applicable law and it includes their legal opinion as to whether or not they believe the mark to be registrable or, if necessary, what amendments should be undertaken to that end.


To begin your application, you need to provide us with information on who will be the registered owner, the name, logo or visual elements you wish to register, the goods or services you wish to seek protection for and in which country or countries you wish to register it.

We will advise you on the best protection option in accordance with the international agreements effective at any given time and we will carry out the necessary actions with the Spanish Patent and Trademark Office (SPTO), the European Union Intellectual Property Office (EUIPO), the World Intellectual Property Organization (WIPO), or the national trademark office of the country or countries you are interested in.


In terms of monitoring, we have a permanent follow-up service for all of the new trademark applications that are continuously published in the different national, international and foreign official bulletins. In doing so, we are able to inform you of any new trademark that may conflict with yours, thus allowing you to exercise your right to oppose them through the legal means provided for by each of the relevant legal systems.

In terms of maintenance, we carry out constant monitoring of your trademarks during their legal life in order to inform you well in advance of the actions that should be carried out to keep them in force. This includes not only the payment of maintenance fees for renewals, declarations of use, etc., but also the gathering of any relevant document or information pertaining thereto.


According to Spanish Law and to those laws effective in most countries around the world, the rights conferred by a trademark registration last for ten years from the application date, indefinitely renewable for subsequent ten year periods by paying the prescribed fees.

Through our monitoring service, which is carried out with the most complete data processing structure and equipment, we follow up the expiry term of your registrations in order to advise you and carry out the necessary procedures to renew and maintain the rights conferred by the trademark, avoiding the possibility of losing them.


According to Spanish Law and the laws of many other countries, a trademark refers to all signs that can be represented graphically to distinguish a company's goods or services from those of other companies in the market.

Trademarks can consist of words and combinations thereof, shapes, images, symbols, drawings or logos, letters and figures and combinations thereof, packagings, labels and three-dimensional shapes as well as sounds.

The exclusive and exclusionary right to distinguish goods and services is granted to trademarks that have been registered in the country or countries decided upon by the applicant, and where registration has successfully been obtained.


The prosecution of a trademark, from its application to its granting, can vary from one country to another, since each country has its own requirements, specific legislation, etc.

In Spain, a standard prosecution, without obstacles or third-party oppositions, can last from five to six months and several more, if any.

The trademarks are published in the Official Intellectual Property Gazette (BOPI), so that third parties may file an opposition alleging superior rights.

If there is no opposition or ex-officio objections, or if these are overcome, the SPTO agrees to grant the trademark and publishes it in the Official Intellectual Property Gazette. Finally, the property title of the trademark is issued in favor of the applicant.


The different legal systems around the world, establish several grounds of refusal on trademark registration. In Spain, the following grounds of refusal are applied to:

Generic signs and those that describe their goods or services cannot be registered - although those that merely evoke their goods or services can - , as well as trademarks that cannot be represented graphically.

Signs that are identical or similar to other previously registered signs, which distinguish identical or similar goods or services, and which may create likelihood of confusion on part of the public, cannot be registered whenever they receive opposition from the holder of a prior trademark.

Once granted, the trademark must used by its holder or licensee no later than five years after that time. In addition, its use must not be interrupted for at least five years, since, its lack of use, could lead to expiry at the request of an interested third party.

I am going to start a business and want to give it a name. What should I do?

In order to use a distinctive name or sign of a good or service for commercial purposes and share it with the general public in a way that sets it apart and is exclusive in the sector to which it belongs, the law provides the possibility of registering two types of distinctive signs:

  • Trade Name.

  • Trademark.

What are the differences between a trade name and a trademark?

A trade name is a sign that serves to distinguish a company or business on the market from other companies which carry out the same or similar activities. It does not necessarily have to have the exact same name as the company name of its holder.

A trademark is a sign that serves to distinguish the goods and services of a company on the market from those of its competitors.

Trademarks or trade names may be a denomination, including the names of people, a drawing, a graphic, a logo, an anagram, figures, colors, or a combination of both words and figurative elements. Three dimensional shapes (packaging, wrappers, shape of a product or its presentation), including sounds, can also consist a trademark.

Who grants me the ownership of a trade name and trademark?

Trademark or trade name rights are obtained through valid registration in accordance with the Trademark Law, and are granted by the State for the entire Spanish territory through the Spanish Patent and Trademark Office, an Institution linked to the Spanish Ministry of Industry, Tourism and Digital Agency.

Once the application is filed and if it fulfills a series of requirements for registration to be granted, the Spanish Patent and Trademark Office issues a Certificate/Title of Property in favor of the applicant, which can be a person or legal entity.

What does the symbol ® mean?

Holders of registered trademarks have the right to place, normally on the upper right-hand corner of their trademark, the symbol ®, which informs consumers and the general public that it is a registered trademark, and as a result, is the exclusive property of its owner. In short, it serves as a notice to the general public, but it is not required to include it.

Can a trademark last forever?

Indeed, trademarks are granted for ten years and their holders can indefinitely apply to renew their registration for subsequent ten-year periods. Trademarks will never expire as long as they are renewed and used by the holder or authorized third parties. In fact, there are registered trademarks from the 19th century that are still in effect. Trademarks are intangible assets, but they aim to be permanent indefinitely.

What can happen if I don?t use my registered trademark?

The law requires a trademark to begin to be used no later than five years from the publication of its granting in the Official Industrial Property Gazette. In addition, it must then be used for more than five consecutive years, since, in this case, lack of use could lead to its expiry at the request of a third party.

What can happen if I use my trademark without registering it?

It will never become your registered property, nor will you be entitled to the resulting rights arising from registration. This means that all your efforts to make it known and give it prestige will be pointless given its very uncertain situation, with the serious risk of having to discontinue its use, usually at the worst time possible.

A trademark that is used without being registered does not have any rights. Trademark rights are acquired through valid registration according to the law.

How can I register the name of a store or a business establishment?

Nowadays, it can only be protected through its registration as a trademark or trade name in relation to the retail services of certain products or a range of products to be identified in the trademark or trade name application.

Are there any limitations to creating a trade name or trademark?

In principle, any distinctive sign can be a trademark or trade name. However, the law establishes two types of grounds for refusal: absolute and relative.

What are the absolute grounds for refusal?

Signs that cannot be considered as a trademark because they do not comply with the legal definition provided in the law, as well as signs that lack of distinctive character, the exclusively generic or descriptive signs as they are used to designate the products/ services, qualities or characteristics related to them, signs that mislead the public about the characteristics of the products/ services or their geographical origin, those constituted by the form imposed by the technical characteristics of the products themselves, as well as certain signs or symbols that reproduce or imitate shields, flags, decorations, etc., as a result, there is an important list of signs, both word and graphic, which may incur in absolute grounds for refusal. Therefore, before filing a trademark application, it is highly important to be advised by our legal department.
However, it exits a possibility and even a legal provision, of being able to register signs that, a priori, could incur in absolute grounds, either by the combination of several signs, as long as it creates a distinctive sign, or because it has acquired, as a consequence of its use, a distinctive character.

What are the relative grounds for refusal?

Trademarks that are identical or similar to a prior trademark cannot be registered to distinguish identical or similar goods or services if there is a likelihood of confusion or association. All trademarks that are filed are published in the Official Industrial Property Gazette so that anyone who believes that they have been infringed upon by an application can object to its granting.

The Spanish Patent and Trademark Office does not carry out ex-officio examinations related to prior registrations; however, it does study, at the request of a third party, if the trademark filed should or should not be granted. For this reason, the constant and effective monitoring of the new registration applications that are published in the Official Industrial Property Gazette, as well as those that come to Spain as an International Trademark or European Union Trademark, has become incredibly important to prevent identical or very similar trademarks from being granted.

How can I find out if I can register the trademark I want?

Before filing a trademark application, and even before carrying out preparatory acts for its use (creating printed materials, brochures, etc.) or publicizing it, it is convenient to properly research its registrability. It is not sufficient to obtain an informative list or locate identical trademarks; instead, it is necessary to conduct a more in-depth search of similar trademarks that may be incompatible with the one we want. In any case, this research will provide us with an important knowledge about possible earlier trademarks, in order to determine the convenience of opting for said sign or, on the other hand, establish different strategies and scenarios for its defense in case of possible conflicts with previous registered trademarks.

Such research must be conducted with respect to previous trademarks in the territories where, in each case, it is of interest to extend the protection of the trademark. For its registration, in Spain, it is necessary to consider the Spanish Trademarks, European Union Trademarks (previously called Community Trademarks) and International Trademarks that designate Spain, which are previously registered in the classes of goods or services of interest.

Can I start to use the trademark as soon as the application for its registration has been filed?

Since the trademark right comes only with registration, we advise using it once it has been granted by the Spanish Patent and Trademark Office. This takes place within a period of five or six months, as long as no third party opposes it and no objections have been raised ex officio by said organization. Using the trademark while it is still being prosecuted means taking on a certain risk. Therefore, we highly recommend starting the application as far in advance of the time you hope to start using it as possible.

What is the registration procedure?

It starts with the registration application, which we normally file with the Spanish Patent and Trademark Office and which provides the applicant's information and chosen distinctive sign, and describes the goods or services for which he/she wishes the registration to be classified in accordance with the International Classification of Goods and Services. If the application has been filed correctly, it is published in the Official Industrial Property Gazette within a short period of approximately 15 days. This is followed by a two-month period during which third parties can file objections. At the end of that period, if no opposition or objections have been filed, the trademark is granted, and this granting is published in the Official Industrial Property Gazette. Finally, the Spanish Patent and Trademark Office proceeds to issue the Property Certificate.

If the trademark receives ex officio objections or oppositions from a third party, based on absolute grounds, adversary proceedings are carried out. This would prolong said prosecution and would conclude months later with the resolution of the registration or rejection, subject to any subsequent appeals by the party disadvantaged by the decision.

How should I describe the goods or services that I wish to use or to protect the trademark for?

It is necessary to identify the goods or services with respect to those the trademark or trade name will be registered, classifying them according to a pre-established list called "International Classification List of Goods and Services", which is composed of 45 classes or sections, containing the totality of the goods or services that may exist on the market.

Considering such International Classification, the applicant must use the list to classify the goods or services for which he/she wishes to register the trademark, taking into account the importance of the trademark to his/her company and the resulting level of registration protection it will have.

Which rights are granted by a trademark registered in Spain?

A trademark registered in Spain gives us the exclusive right to use it in the market and to identify our goods or services. It can be used as-is or by third parties that are authorized by the holder of the trademark.

A granted trademark gives the right to prevent unauthorized third parties from using it in an identical or similar way, for identical or similar goods or services that may lead to confusion or association, being able to bring to court anyone who infringes this exclusive right.

Finally, it includes the right to oppose the granting of any later registration application which, due to being identical or similar within the protected scope of our trademark, may lead to confusion. This right is also recognized with respect to the simple trademark application.

Do I have the right to register and use my surname as a trademark?

When used in commercial activity to distinguish goods or services, "surname trademarks" cease to be regarded as surnames, becoming distinctive signs or trademarks in their own right, which have a commercial, not civil, scope. If your surname is registered as a trademark by another person, you cannot register it if the previous holder opposes it and their opposition is upheld. Furthermore, you cannot use it as a trademark if there is a claim to it, even though the law establishes certain special situations in which one can use their own name regardless of the existence of a registered trademark.

Can I sell my trademark, or license the use of a trademark or trade name?

Yes, you can sell your trademark or trade name to whomever you deem appropriate. However, if you wish to retain ownership of it, even if it is used by third parties, you can grant an exclusive license or one or several non-exclusive licenses to the trademark or trade Name. For these contracts to be effective against third parties, they should be registered at the Spanish Patent and Trademark Office.

These intangible - but highly valuable - assets are transferable by any of the methods permitted by law, including inter vivos or causa mortis, and can be transferred by inheritance. It is even possible to transmit an undivided percentage of the right, establishing a co-ownership over it.

Can my trademark registration in Spain be used in other countries, for example to export my products or provide my services?

No. Trademarks are territorial rights and as such, their registration is only valid in countries or territories where they are registered. Furthermore, a Spanish trademark should not be used in European Union member countries if it is not registered as a European Union trademark or registered individually in each one of those countries.

How can I protect my trademark outside of Spain?

There are three ways to protect a trademark beyond Spanish borders:

  • National Trademark, filed country by country. This implies that it must comply with the requirements laid down by each country. In some cases this requirements are complex, just to mention, the legalization of documents. In terms of administration, it also requires the processing of separate files and is usually more expensive and time consuming compared to other options (if available).

  • International Trademark, filed before the World Intellectual Property Organization (WIPO) with headquarters in Geneva. This system requires the trademark in question to have been filed at least in its country / territory of origin. That trademark is known as the "basic trademark". For applicants residing in Spain, the basic trademark must be previously filed with the Spanish Patent and Trademark Office (SPTO) or the European Union Intellectual Property Office (EUIPO) and the said trademark must be granted and remain in force for at least five years from the filing date of the International Trademark, a period during which the International Trademark will be link to its validity. With this option, we can designate the countries where we wish to extend the trademark, choosing from among the nearly one hundred that are included in this system, in addition to two supranational organizations, namely OAPI and UE (obviously the latter one should the basic trademark not be a European Union Trademark). This will involve the payment of fixed fees as well as other fees that vary according to the number of classes and designated territories.

  • Supranational Trademarks filed before a supranational organization that comprises various countries. Currently, this is only possible by filing a trademark with the European Union Intellectual Property Office (EUIPO), with headquarters in Alicante; in other words, filing a European Union Trademark (formerly known as a Community Trademark), which upon registration will provide us with a unitary protection throughout the entire EU territory, or filing the trademark with the African Intellectual Property Organization (OAPI), which will also provide us with a unitary protection in most French-speaking African countries (see OAPI).

Which of the three options do you recommend the most?

They are not exclusive, but rather complementary. For example, any of the three options can be used with any member country of the European Union. Other countries, such as Japan or the USA, accept both the direct national trademark option as well as the International Trademark option. Nevertheless, to register a trademark in Latin American countries, Colombia and Mexico excepted which already form part of the International Trademark system, only the first option can be used In other words, there is no other option but to file a trademark country by country. However, given the implications regarding the fulfillment of formal and legal requirements, not to mention the costs involved, each of these three options requires a prior study in order to finally select the option that best fits the client's needs. To that end, UNGRIA has a specific department formed by a multilingual team of lawyers who carry out both the prior study as well as the subsequent processing of the trademark before the different administrations of the countries to which the trademark is finally extended.

What are the main characteristics of the European Union Trademark?

Prima facie, they are practically the same as those of a Spanish trademark, although there are differences too. One of the main differences resides in the territorial scope of protection, since they are valid throughout the entire European Union, consisting currently of 28 countries (the consequences of BREXIT as still under discussion). Moreover, the holder of a European Union Trademark cannot restrict the scope of protection or surrender the registration of that trademark in any country, as it is a single registration carried out by means of one application and one registration procedure before the European Union Intellectual Property Office (EUIPO. The protection period lasts for ten years from the date of the application, renewable for subsequent ten-year periods.

The decisions of the EUIPO can be appealed before the EUIPO's Boards of Appeal and the decisions of the Boards of Appeal, in turn, can be appealed before the Court of Justice of the European Union (CJEU) with headquarters in Luxembourg.

Can a European Union Trademark be partially transferred or licensed?

Due to its unitary property character, it cannot be transferred partially. In other words, it is only valid for all countries in the European Union. This said and in general, part of the goods and services of a European Union Trademark can be transferred to a third party, however this partial assignment having effects in the entire European Union.

On the other hand, it is possible for the owner of a European Union Trademark to grant partial licenses of use for that trademark for one or several countries in the European Union and for all or some of the goods or services claimed by the trademark. At the request of a third party and through negotiation, it is also possible to limit the territorial scope of use of the trademark, as long as it does not imply restrictive practices contravening free competition rules.

What are the advantages of using the Community option?

Most registration procedures are simplified and there are fewer costs compared to those involved when applying for the same trademark country by country before the respective national registries. However, the European Union Trademark should observe national trademark rights and vice versa, with the older one always prevailing in the event of conflict. This can lead to exceptions of use (but not of registration) in one part of the territory, especially when new countries join the European Union, according to the principle of "acquis communautaire", whereby a new member state must adopt most of the Community legislation in force when it joins, including the rules governing European Union Trademarks.

In addition, it should be noted that generally speaking real and effective use of a European Union Trademark in one EU country is to prove and justify that the trademark is used throughout the entire EU. For example, a European Union Trademark cannot be challenged for non use in, say, Finland, as long as it is used in, say, Spain.

Are there any disadvantages to using the Community option?

Only the side-effect that it can be opposed by a third party and be denied based on another previous European Union Trademark or based on any previous national or international trademark in force before the national registry of an EU country. For example, a national or international trademark that is only registered in France could prevent a European Union Trademark from being registered if the two are deemed to be confusingly similar and the holder of the prior trademark files an opposition.

In addition, there is a broader range of ex officio objections based on absolute grounds of refusal which can be alleged by an examiner of the EUIPO. Therefore, if a European Union Trademark were to be considered generic, for example in Greece, it would be refused for all of the European Union.

In these cases, a European Union Trademark can be transformed into national trademarks by payment of additional fees in countries where the opposition or refusal due to an ex officio objection have no effects, all of this being possible retaining the initial priority or application date. In this case, the trademark will be processed as independent national trademarks according to the domestic law of each the designated countries. Once again, multidisciplinary professional consulting is essential to better guarantee the rights of the trademark owner in adverse situations.

How long has the International Trademark existed?

In 1891, an agreement called the "Madrid Agreement" was adopted in Madrid and was initially signed by a handful of countries, Spain being one of the founding countries. It signed the agreement on April 14, 1891 and ratified it on June 15, 1892. Throughout the 20th century new countries joined, a tendency that continues along the current century. In 1989, the new "Protocol Relating to the Madrid Agreement" was signed, commonly known as "The Protocol". One of the achievements of this second agreement, which relaxes the previous rules, was to allow other countries such as the United States and Japan, which were wary of its inflexibility, to join. Currently, the International Trademark System or the "Madrid System" is made up of nearly one hundred contracting parties, which include both sovereign countries and supranational organizations (the European Union and the OAPI).

What characteristics do International Trademarks have?

It allows the applicant with a single filing to extend a basic trademark that was previously filed in its country or territory of origin, in our case be it Spain, via a national Trademark, or the European Union, via a European Union Trademark, to all or some of the remainder member countries / territories, technically known as the "contracting parties". The contracting parties to which an International Trademark is extended should be chosen on beforehand by the applicant. Once the International Trademark has been registered, there also exists the possibility of designating new contracting parties at a later date through a procedure called "subsequent designation".

However the basic trademark must at least having been filed in the country / territory of origin and the validity of the International Trademark is linked to the final grant of the basic trademark and the subsistence thereof during five years following the application date of the International Trademark.

The application of an International Trademark takes place with the World Intellectual Property Organization (WIPO) with headquarters in Geneva. However, this filing cannot be carried out by the applicant itself directly before WIPO. The applicant must first of all file the basic trademark at the national Office of the country / territory of origin, in our case, the SPTO or the EUIPO, who in turn will pass the application to WIPO after having checked the conformity thereof with certain requirements. Under normal standards, WIPO will retain as filing date the same filing date of the basic trademark, a date also observed by the designated contracting parties.

Once WIPO has also checked that the new application complies with certain requirements, it will launch the trademark to all designated contracting parties. After that date, there is a period that ranges from 12 to 18 months, as the case may be, so that the examiners of the designated contracting parties can raise objections to the final registration of that trademark in their respective territories. In this case, a contradictory proceeding will begin in order to determine whether the International Trademark should be granted or refused in the corresponding country / territory. An adverse decision can be appealed, but must be done so in accordance with the national legislation of the country / territory in question. If no objections have been raised, the trademark will finally be registered.

Anyhow, if the application has been correctly submitted, it will be published in the "WIPO Gazette of International Trademarks", weekly published by WIPO in Spanish, English and French.

Is an International Trademark a unitary certificate for the set of designated countries?

The answer is mixed: yes and no. Let's explain:

Yes, in the sense that WIPO assigns an International Trademark a sole registration number and date and issues a valid Certificate of Registration as if the trademark had been filed as a national trademark. However, this does not prevent the national registries from issuing their own Registration Certificates. In addition, the duration of the International Trademark is the same (ten years from its filing date) for all designated contracting parties, although some countries require the fulfillment of certain requirements in order maintain the International Trademark in force in their respective territories. This is the case of the "Declarations of Use" required by the Philippines and USA (Mexico will implement this obligation starting August 10, 2018), or the payment of certain complementary fees when the trademark is granted, as in the case of Japan and Cuba.

However, the answer is also no because, as previously mentioned, the examiners of each country or territory have the power to grant or refuse the International Trademark, which in practice means that that an International Trademark can be granted in some countries and refused in others.

In fact, the International Trademark is to be considered as a national trademark registered in different countries, but processed partially and with various registry aspects managed by WIPO.

What advantages are there in using the International Trademark process?

The launching of this type of trademark more than a century ago was initially intended to simplify the application and processing of a trademark in several countries and, consequently, to reduce the costs involved in case that trademark was to be filed country by country.

With a single filing, we can designate nearly one hundred contracting parties, including sovereign states and supranational organizations, all of them under the same application date.

It will only be necessary, if desired, to deal with possible objections arising from certain designated contracting parties, should this occur, but these objections will not affect the processing and granting of the trademark in the remainder countries.

In fact, the International Trademark is a good option to jointly and inexpensively apply for a trademark in a significant number of countries.

At UNGRIA, we work on a case-by-case basis to provide you with sounded professional advice as to the most appropriate option selected among the available ones, especially when taking into account the legal and financial implications involved in choosing the best one.

What are the disadvantages of the International Trademark?

It has a small disadvantage, which is the fact that it should be based on a basic trademark, at least filed in its country / territory of origin. In addition, the subsequent International Trademark is linked to the basic trademark during five years from the date of registration of the International Trademark. If, within that period, the basic trademark is refused or cancelled, the International Trademark will be cancelled too.

Should this occur, it is possible to convert the International Trademark by paying additional fees into national trademarks, country by country and in those countries where the holder is still interested in. In any case, the original application date of the International Trademark or the priority date, should this be the case, will be observed. Once that period has expired, they will no longer be linked.

On the other hand, since it is not a unitary trademark, it must be used in all the designated contracting parties and during specific time periods where required. Otherwise, it may completely or partially cancelled for non-use in some countries, regardless of the fact that it is used in others. This is the opposite of what occurs with European Union Trademarks.