Opposing a trademark in Spain: deadline, grounds and procedure

Who can oppose and on what grounds

Under article 19.1 LM, entitlement depends on the ground:

• Absolute grounds (art. 5.1): any natural or legal person who considers themselves harmed.
• Earlier marks and trade names (arts. 6.1, 7.1 and 8): their owners and authorised licensees.
• Other earlier rights (art. 9.1), such as a person’s name or image or copyright: their owners or the persons authorised.

The usual ground is article 6.1.b) LM: identical or similar signs, identical or similar goods or services and a likelihood of confusion, including association. Earlier marks include Spanish marks, international registrations with effect in Spain and EU trade marks (art. 6.2 LM), so a foreign group with an EU trade mark can oppose in Spain without holding a Spanish registration. If the earlier mark has a reputation, article 8 extends protection, including against dissimilar goods or services.

Why you should not wait for a notice

The OEPM may notify owners of earlier signs found through a computer search, but only for information purposes and within its technical and material means (art. 18.4 LM). The deadline runs from publication, whether or not any notice arrives, and it cannot be rescued later through re-establishment of rights (art. 25.5 LM). This is the reason for trademark watching: reviewing the gazettes regularly to detect conflicting filings in time.

What the opposition must contain

An opposition is a reasoned and duly documented statement, in Spanish (arts. 19.2 and 11.9 LM). It must identify the application, the goods or services targeted and the earlier right (art. 17.2 RLM). It will not be admitted if filed late, if the fee is unpaid, if it does not identify the application, the opponent or the earlier right, or if the power of attorney is not filed in time (art. 19.1 RLM). Other irregularities can be remedied within ten days (art. 19.2 RLM).

How the procedure continues

• After the opposition period, the OEPM carries out the substantive examination (art. 20.1 RLM).
• If there is an admitted opposition, it issues a substantive office action and the applicant has one month to respond (art. 20.2 RLM).
• The applicant may request proof of use, and the opponent then has one month to file it (art. 21 bis.2 RLM).
• The OEPM grants or refuses, in whole or in part (art. 22 RLM).
• The decision can be challenged by administrative appeal within one month.

Check your own mark first

If your mark had been registered for at least five years at the filing or priority date of the application you oppose, the applicant may require proof of genuine use during the preceding five years (art. 21.3 LM). Where the earlier mark is an EU trade mark, use is assessed under article 18 of Regulation 2017/1001 (art. 21.6 LM). Evidence must show place, time, extent and nature of use, and anything not in Spanish needs a translation of its relevant parts (art. 21 bis, paragraphs 3 to 5, RLM). If you cannot prove it, it is better to know before filing.

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.