Substantive office action at the OEPM: grounds and how to respond

Office actions based on absolute grounds

Absolute grounds protect the public interest, so the Office examines them without anyone needing to object. The most common are:

• Lack of distinctive character (art. 5.1.b LM).
• Descriptiveness (art. 5.1.c LM): signs consisting exclusively of indications of the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of the goods or services.
• Customary terms (art. 5.1.d LM): signs that have become customary in current language or in trade practice.
• Deceptiveness (art. 5.1.g LM): signs liable to mislead the public, for example about the nature, quality or origin of the product.

The key word in article 5.1.c) is «exclusively». A mark that includes a descriptive term is not unregistrable for that reason alone: what the sign as a whole contributes must be analysed, including its figurative elements and the combination of words. If the problem lies in one element, article 21.2 LM allows you to exclude it from the protection sought and keep the rest. English words deserve particular care: what matters is how the relevant public in Spain would understand them.

Distinctiveness acquired through use

Article 5.2 LM provides that registration will not be refused under letters b), c) or d) if, before the date of registration, the sign has acquired distinctive character through use. Use elsewhere is of little help here. You need to document use of the sign as applied for and its perception in Spain, with sales data, advertising and market presence.

Office actions based on an opposition

The analysis should follow the structure of article 6.1.b) LM:

• Comparison of the signs, by their overall impression, visually, phonetically and conceptually (SABEL, C-251/95, paragraph 23).
• Comparison of the goods or services, term by term, according to what appears in the register and not what the opponent does in practice.
• Likelihood of confusion, assessed globally, taking into account the interdependence of the factors (Canon, C-39/97, paragraph 17) and the relevant public (Lloyd Schuhfabrik, C-342/97, paragraph 26).

Phonetic comparison is made according to how the Spanish public would pronounce the signs, which may differ from how they sound in their language of origin.

Proof of use: a tool that expires with the month

If the opposing mark had been registered for at least five years at the filing or priority date of yours, you can require its owner to prove genuine use during the preceding five years (art. 21.3 LM). Without that proof, the opposition is dismissed. This also applies where the earlier right is an EU trade mark (art. 21.6 LM).

The request is only admissible if made expressly, in a separate and unconditional document, within the period to respond (art. 21 bis.1 RLM). The opponent then has one month to file the evidence, and you have one further month to comment on it (art. 21 bis, paragraphs 2 and 7, RLM). If the earlier mark has only been used for part of its goods or services, it is treated as registered only for that part (art. 21.5 LM).

Limiting or dividing the application

Where the conflict affects only some goods or services, there is no reason to put the whole application at risk. Limitation removes what causes the problem (art. 23.1 LM). Division moves the disputed part into a divisional application, so that the Office can grant the rest and decide on the other part later (art. 24 LM and art. 22.2 RLM).

Before instructing me, I read the decision and any opposition, check the earlier mark in the registers and tell you candidly what prospects I see. 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.