Office action on your trademark in Spain: what it means and how to respond in time

What a «suspenso» is

Registration of a trademark in Spain is not automatic. After filing, the OEPM examines the application in several stages and may suspend the file at any of them. It then tells you what the problem is and gives you a period to answer (art. 21.1 of the Trade Marks Act, «LM»).

A suspension should not be confused with a refusal. The refusal is the decision that ends the registration procedure. The suspension comes before it, precisely so that the applicant can respond. By my own count from an 11-week sample of the BOPI, around 11,000 substantive office actions are published each year. That is my estimate rather than an official statistic, but it shows that receiving one is quite common.

If you are outside Spain

Four points catch foreign applicants out, so it is worth checking them first:

• The clock runs from the BOPI, not from when you hear about it. The month starts with publication in the Gazette (art. 20.2 of the Regulations, «RLM»), so a notice forwarded late by a local contact does not extend it.
• Language. The application and all other documents filed at the OEPM must be in Spanish (art. 11.9 LM). Evidence of use in another language must come with a Spanish translation of its relevant parts (art. 21 bis.5 RLM).
• Representation. Nobody is generally obliged to be represented before the OEPM. However, persons with neither a domicile nor a real and effective establishment in the European Economic Area must be represented by an Industrial Property Agent (art. 56.2 RLM). I am a lawyer, not an Industrial Property Agent, so if that is your situation, tell me at the outset, because I could not represent you directly before the OEPM. If you act yourself from outside Spain, you must designate an address for notifications in Spain or the EEA, or another technical means of communication (art. 56.1 RLM).
• International registrations. If your mark is a Madrid System registration designating Spain, the period to respond is between two and four months, as set by the OEPM (art. 20.2 RLM).

Types of office action

The first step is to identify which one you have received, because the problem and the response are entirely different.

The formal deficiency is usually the simplest. The one that really puts the mark at risk is the substantive office action, which can in turn have two very different origins.

The two causes of a substantive office action

An absolute ground raised by the Office

The OEPM examines of its own motion whether the sign falls within the prohibitions of article 5 LM or article 9.1.b) LM, which concerns a name or pseudonym that identifies another person (art. 20.1 LM). In practice the most frequent grounds are lack of distinctive character (art. 5.1.b), descriptiveness (art. 5.1.c) and terms customary in the trade (art. 5.1.d). A mark that is perfectly clear in English may be descriptive or customary for the Spanish public, or the reverse, so the analysis must be made from the standpoint of that public.

An opposition by a third party

The OEPM does not compare your mark with earlier registrations of its own motion. That comparison only happens if the owner of an earlier right opposes, usually under article 6.1.b) LM: identical or similar signs, identical or similar goods or services, and a likelihood of confusion on the part of the public. Oppositions must be filed within two months of publication of your application.

How the month is counted

Time runs from the day after publication and ends on the same date of the following month. If the last day is not a working day, it is extended to the next working day (art. 30, paragraphs 4 and 5, of Act 39/2015). For example, an office action published on 26 October expires on 26 November.

What you can do when responding

A response is not limited to disagreeing. Article 21.2 LM and article 21 RLM open several routes, which can be combined:

• Argue that the objection or the opposition is unfounded, and file supporting evidence.
• Limit the list of goods or services to step away from the conflict (art. 23 LM). If the limitation results from an office action raised by the OEPM of its own motion, no fee is payable for it (art. 23.3 LM).
• Divide the application, so that the unaffected part proceeds and only the disputed part remains pending (art. 24 LM).
• Disclaim elements caught by article 5.1.b), c) or d), through the declaration provided for in article 21.2 LM.
• Request proof of use of the opposing mark, if it had been registered for at least five years at the filing or priority date of yours (art. 21.3 LM).
• Negotiate with the opponent, for example a withdrawal in exchange for a limitation or a coexistence agreement.

How a mark is defended against an opposition

Likelihood of confusion is a global assessment, not a tally of coincidences. In SABEL the Court of Justice held that the comparison must be based on the overall impression given by the marks, bearing in mind their distinctive and dominant components (C-251/95, paragraph 23).

The most common flaw in oppositions follows from this: isolating the word that coincides and ignoring the rest. The Court has set a clear limit:

«it is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element»

CJEU, OHIM v Shaker (Limoncello), C-334/05 P, paragraph 42

The question, then, is not whether the coinciding term is relevant, which it usually will be. The question is whether the rest of the sign is negligible. If it is not, the signs must be compared as wholes, visually, phonetically and conceptually.

The second axis is goods and services. Similarity of signs and similarity of goods are interdependent: a lower degree of one may be offset by a greater degree of the other (Canon, C-39/97, paragraph 17). The third is the public: the average consumer, reasonably well informed and reasonably observant and circumspect, whose attention varies with the category of goods or services (Lloyd Schuhfabrik, C-342/97, paragraph 26).

What happens if you do not respond

Once the period has ended, whether or not you have responded, the OEPM grants or refuses the registration (art. 22.1 LM). Silence does not by itself cause an automatic refusal, but the Office will then decide with only the objection or opposition before it, and you lose tools that exist only at that stage, such as the request for proof of use, which must be made within that same month (art. 21 bis.1 RLM).

If the mark is refused, an administrative appeal remains available. The exception is the formal deficiency: if it is not remedied, the application is deemed withdrawn (art. 16.5 LM).

The OEPM applicants manual indicates a maximum of 12 months to decide an application with no office action or opposition, and 20 months where there has been one.

I work on fixed rates by process: each procedure has a closed fee, which you know before instructing me, with no hourly billing. Official fees, where they apply, are separate.