Spanish Patent and Trademark Office (OEPM)

The Spanish Patent and Trademark Office (OEPM) is the public body responsible for registering and granting the various forms of Industrial Property in Spain.

 Web site: www.oepm.es  Address: Paseo de la Castellana 75, 28071 Madrid  Telephone: 902 157 530  E-mail: [email protected]

At the OEPM it is possible to register:

1. Trademarks and Trade names 2. Patents and Utility Models 3. Industrial Designs

1. TRADEMARKS AND TRADE NAMES

Trademarks and Trade names are Industrial Property rights which enable a company to distinguish its products or services from those of other competitors in the market. The holder of a Trademark or Trade name registration is entitled to prevent others from using in a similar or the same sector of activity, the names or signs which are identical or similar to their own.

The scope of Industrial Property registrations covers a specific territory. Depending on the company’s strategy, there are various ways of protecting their registrations. On the basis of an initial application for a National Trademark in Israel, the company has 6 months to file an application of a different kind (National in Spain, European Union Trademark, or International) retaining the filing date of the initial application. The decision on where to register should be considered on basis of the market in which you intend to sell your products and/or services.

Different ways of protection available in Spain

A- National:

Prior to filing a Trademark/Trade name:

It is appropriate to carry out a search in order to ensure that there are no other earlier trademarks similar or the same as your own, and the OEPM makes free databases available for this purpose such as the Trademark search engine

Grant Procedure:

 Who is eligible to file a national Trademark/Trade name in Spain:

Any natural or legal person. Non-residents in a member state of the European Union are required to act in any case, through an Industrial Property Agent . The residents in a Member State of the European Union acting on their own initiative are required to designate a postal address in Spain for the purposes of notifications, or instead indicate that notifications should be addressed to them by e-mail.

 Where to file the national Trademark/Trade name application:

In person:

- Directly at the Spanish Patent and Trademark Office - At an Industrial Property Regional Information Centre , - In the registers of any administrative government body, any governing authority of the Autonomous Communities, - At Post Offices, - In the Spanish diplomatic representations or consular offices abroad.

By Internet: through the Online Office, accessible from the OEPM web site.

 Cost In 2016, the fee for registering a Trademark/Trade name and their protection in Spain for a 10 year period is 144.58 euros for the first class filed. If the Trademark/Trade name application is filed through the Online Office , a discount of 15% applies. Credit Card payment is also possible.

 Duration of protection

The initial duration of a Trademark/Trade name is 10 years from the date of filing and Trademark/Trade name may be maintained indefinitely for successive periods of 10 years, although renewal fees need to be paid in this case.

B- European Union Trademark: This channel can be used to obtain protection throughout European Union territory (27 countries, including Spain).

C- International Trademark: This channel can be used to obtain protection in countries who are signatories to the Madrid System, therefore, based on a national Trademark application in Israel, it would be possible to obtain protection in Spain.

2. PATENTS AND UTILITY MODELS

Patents and Utility Models protect technical innovations (inventions) and in exchange for their disclosure, their holder is permitted temporarily to prevent others from manufacturing, selling or using the invention in trade.

As Industrial Property rights have a territorial coverage, protection will only be obtained in countries or regions where said applications are filed. Depending on the company’s strategy, numerous channels of protection are available. Based on the date of the initial Patent/Utility Model application, the applicant will have a term of 12 months within which to file an application of a different type (National, European or International (PCT)) maintaining the filing date of the initial application.

Utility Models are only valid at national level, in Spain, but they have the same effects as a National Patent. Therefore, as with National Patents, it would be possible to file an Israeli, European or PCT Application using the priority of a Spanish Utility Model. Similarly, an international, European or Israeli Patent may have priority for a Spanish Utility Model.

Different ways of protection in Spain:

A- NATIONAL:

Prior to filing a Patent or Utility Model:

It would be advisable to carry out a search in order to ensure that there is no other similar or identical invention to your own, and for this purpose there are free data bases available such as Invenes (inventions in Spain ) or Espacenet (inventions at international level).

Grant procedure:

 Who is eligible to file a National Patent/Utility Model in Spain:

Same as Trademark/Trade name

 Where to file the application: Same as Trademark/Trade name  Cost

The fees payable to the OEPM vary between 780 and 1200 euros. In the case of a Utility Model, the application would cost approximately 100 euros. If the application is filed Online Office, a 15% discount is applied to the filing fee. The electronic processing requires use of a duly accredited electronic certificate.

 Duration of protection

Protection is granted to a Patent for twenty years and a Utility Model has duration of ten years from the date that the application is filed.

B- EUROPEAN: Protection can be obtained through this channel in the countries that are signatories to the Munich Convention (38 countries, including Spain).

C- INTERNATIONAL (PCT): This option provides protection in countries/regions that are signatories to the Patent Cooperation Treaty (PCT), which includes Spain. The Spanish Patent and Trademark Office may act as the authority responsible for the International Search (ISA) and is authorised to carry out the International Preliminary Examination (IPEA) for applications in Spanish.

3. INDUSTRIAL DESIGNS

An Industrial Design is considered to be the ornamental or aesthetic aspect of a product which visually differentiates it from another without taking into account any of its technical or functional characteristics. By protecting a design, titleholders obtain the exclusive right to prevent third parties from reproducing or imitating it without their authorisation, however it also distinguishes their products from those of competitors, improves their company’s image and like all industrial property registrations can be assigned or sold, with the added advantage of helping to generate further profits.

Industrial Property registrations have territorial coverage. Depending on the company’s strategy, there are various ways of protecting their registrations. On the basis of an initial application for a National Industrial Design in Morocco, the company has 6 months within which to file an application of a different kind (National in Spain, Community or International) retaining the filing date of the initial application. The decision on where to register should be considered on basis of the market in which you intend to sell your products and/or services.

Different ways of protection in Spain:

A- NATIONAL:

Prior to filing a Design:

It is appropriate to carry out a search in order to ensure that there are no other earlier designs which are very similar or the same as your own, and the OEPM makes free databases available for this purpose such as Diseños en español.

Grant procedure:

 Who is eligible to file an application for an industrial design in Spain:

Same as Trademarks/Trade name, Patents and Utility Models

 Where to file the application: Same as Trademark/Trade name, Patents and Utility Models  Cost

In 2016, the fees for registering an Industrial Design and obtaining its protection in Spain for a period of 5 years is from 74.92 € (up to 10 different designs). A 15% discount applies if the application is filed on-line. Credit Card payment is also possible.  How long will protection last?

Registration of the design is granted for five years from the date of filing the application, and it may be renewed for successive five yearly periods, paying the corresponding fees, for a period of up to 25 years.

 COMMUNITARY: Protection can be obtained through this channel throughout European Union territory (27 countries including Spain).

 INTERNATIONAL: Protection can be obtained through this channel in the countries/regions which are part of the Hague Convention which includes Spain.