Trademark refused in Spain: the administrative appeal before the OEPM

What a refusal means

The refusal is the decision by which the OEPM closes the registration procedure at first instance. It must state, even if briefly, the reasons on which it is based (art. 22.1 LM), it is published in the BOPI (art. 22.3 LM) and it may be total or limited to some goods or services (art. 22.2 LM). By my own count from an 11-week sample of the BOPI, around 6,500 refusals are published each year; this is my estimate, not an official figure.

The refusal does not end the administrative route, and this appeal is a prior and mandatory step for reaching the courts, as the OEPM applicants manual points out. For applicants abroad the point to watch is the same as with office actions: time runs from publication in the BOPI, and the appeal must be filed in Spanish (art. 11.9 LM).

What can be argued

The appeal must attack the specific reasons of the decision. Article 22.1 LM allows the Office to give reasons «briefly», but even brief reasoning must refer to the signs and goods actually in conflict. So I first check that the decision starts from the right premises: which earlier mark it identifies, for which goods, and how it compared the signs.

• Errors in comparing the signs, such as relying on a single element when the others are not negligible (OHIM v Shaker, C-334/05 P, paragraphs 41 and 42).
• Errors in comparing the goods or services, or a failure to examine some of them.
• Failure to assess submissions or evidence filed.
• An alternative claim for partial registration, in case the appeal is not upheld in full.

Limiting or dividing on appeal

The applicant may limit the list of goods or services «at any time» (art. 23.1 LM), and division is possible during registration or appeal proceedings where it confines the conflict to one of the divisional applications (art. 24.2 LM). A voluntary limitation may attract the corresponding fee (art. 23.3 LM). Negotiation with the owner of the earlier mark also remains possible at this stage.

The appeal fee

Filing the appeal requires payment of a fee. It is only refunded if the appeal is upheld in full on legal grounds attributable to the Office, and the refund must be requested when filing (art. 27.2 LM).

What happens next

The Office has a maximum of three months to issue and notify its decision; after that, the appeal may be deemed dismissed (art. 122.2 of Act 39/2015). Once the appeal has been decided, the route to the administrative courts is open (art. 28.4 LM), with a two-month period from an express decision (art. 46.1 LJCA).

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.