InterAlia’s trademark services:

General advice, prosecution and actions before trademark offices:

• Clearance searches and availability opinions
• Spanish and European trademark applications
• Answering office actions on International trademarks designating Spain or the EU
• Oppositions to Spanish and European trademarks
• Negotiation and drafting of coexistence agreements
• Invalidation and revocation of European trademarks
• Recordation of assignments and licenses

Dispute advice and litigation:

• Dispute assessment and advice about resolution strategies
• Drafting and answering cease and desist letters
• Out-of-Court settlement negotiations and drafting of agreements
• Litigation before the Spanish Courts acting on behalf of plaintiff or defendant in all sorts of proceedings concerning trademark rights, such as:
• Trademark infringement
• Cancellation and revocation of Spanish trademarks
• Disputes about trademark ownership and bad-faith invalidation actions
• Non-use cancellation actions concerning Spanish trademarks
• Unfair competition actions for acts of confusion and passing-off
• Court appeals from Spanish PTO decisions
• Appeals to the General Court of the European Union from European Trademarks Office decisions

Inter-Alia’s Spanish and European trademarks application service includes for a single professional fee:

• An availability search with opinion
• Filing of application
• Reporting publication
• Reporting office actions or oppositions with assessment and price quotation for each possible resolution option
• Reporting registration or refusal with advice about appeals
• Trademark watching until next renewal

QUICK POINTS ABOUT TRADEMARKS

SPANISH TRADEMARKS

• Spanish trademarks get registered in about 4 months if there is no objections or in 6 months otherwise.
• For an online filing, the office fee is € 122,89 for the first class and € 79,61 for each subsequent class.
• Applications are published in about 10 days, however if filed online they are available on the Spanish PTO database and on its search engine a few hours afterwards.
• Prior to publication only formal requirementsare examined, not absolute grounds.
• Opposition period is 2 months after publication.
• After opposition period has ended, examiner notifies at the same time absolute and relative grounds of refusal.Absolute grounds can be raised by opponent party. Relative grounds are not raised ex officio.
• Opposition proceedings are quite fast: there is no cooling-off period, applicant has the chance to one set of allegations only and no proof of use of the earlier mark can be requested (if certain about non-use, applicant must file a cancellation action in court and request suspension of office proceedings). However the law is due to change in this respect.
• Examiner decisions can be appealed to a legal officer and subsequently to the courts of justice, however these proceedings take around two years.

EUROPEAN TRADEMARKS

• Without objections, a European trademark is registered in about 7- 8 months. In case of objections, especially if they are oppositions, timing is difficult to estimate because there are many options available but it can safely be said that an opposition which is not settled increases registration time in at least 9 months to one year.
• For an online filing, the fee is €850 for one international class of goods or services, €150 for the second class and €50 for each subsequent class.
• Applications are examined as to formal requirements and absolute grounds of refusal.
• If there are no objections, or there are only formal objections quickly addressed by applicant, applications get published in about one month.
• Opposition period is three months. Any earlier CTM right or national right in a European Union member State can form the basis for an opposition.
• If opposition based on a national right is upheld, the ETM can be converted into national applications in the other EU member states.