Trademark watch and enforcement: from alert to lawsuit

Trademark watch and enforcement are two halves of the same job: the watch detects conflicting filings and uses by third parties, and enforcement is the ladder of responses, from a warning letter to opposition, cancellation and an infringement lawsuit with damages. Each rung has its own deadline, and several are short or final. This guide follows Spanish law and the EU trade mark system, and is written for companies that own marks in Spain or the EU and want to know when and how to act.

Key takeaways

Oppositions must be filed within two months of publication at the Spanish office (OEPM) and within three months at the EU office (EUIPO).
Since 14 January 2023, invalidity and revocation of Spanish marks can be requested directly from the OEPM, not only in court.
Civil infringement actions under the Spanish Trade Marks Act are time-barred after five years, and damages cover only the five years before the claim.
Tolerating a later registered mark for five consecutive years, knowing of its use, generally bars you from seeking its invalidity.
A formal warning matters: against many infringers, damages are owed only once they have been warned or acted negligently.

What does a trademark watch cover?

A trademark watch is a monitoring service that reports signs similar to yours as soon as they appear. In practice it has three layers:

Filing watch: new applications published by the OEPM, the EUIPO, WIPO (for international registrations under the Madrid System) and the national offices in your other markets.
Market and online watch: marketplaces, websites, domain names and social media where copies or lookalikes are sold.
Border watch: notices from customs once you have filed an application for action.

The OEPM sends holders of earlier Spanish marks an informative notice of later similar applications, about seven days before publication, based on its own computer search (OEPM applicants’ manual, January 2024). It is useful, but it is limited to Spain, it is informative only and it does not cover use on the market. A professional watch adds the EU and international registers, wider similarity criteria and someone who decides what deserves a response.

The escalation ladder: from alert to lawsuit

Not every alert justifies litigation. The rungs below go from cheapest and fastest to most powerful. The legal references are to the Spanish Trade Marks Act 17/2001 (LM) and the EU Trade Mark Regulation 2017/1001 (EUTMR).

Rung	When it fits	Where	Key deadline or rule
1. Evidence and assessment	Any alert	Internal, with your adviser	Capture dated evidence before contacting anyone
2. Warning letter	Use on the market, or a filing you want withdrawn	Directly to the third party	Triggers liability for damages of many infringers (LM, art. 42.2)
3. Opposition	A published application conflicts with your mark	OEPM or EUIPO	Two months from publication in the BOPI (LM, art. 19); three months at the EUIPO (EUTMR, art. 46)
4. Invalidity or revocation	A conflicting mark is already registered, or an unused mark blocks you	OEPM directly, or by counterclaim in court	Five years of knowing tolerance bars invalidity, except bad faith (LM, art. 52.2; EUTMR, art. 61)
5. Infringement action	Use continues after the letter, or the case is serious	Commercial courts	Action time-barred five years after it could be brought (LM, art. 45)

Warning letter

Article 42 LM distinguishes two groups. Those who affix the sign to goods, packaging or labels, and those responsible for first putting the marked goods on the market, are liable for damages in any case. Everyone else, such as a reseller or an online seller further down the chain, is liable only if it was sufficiently warned by the holder with a request to stop, acted with fault or negligence, or the mark has a reputation. A well-drafted letter therefore does more than ask: it fixes the date from which damages run. It also carries risks if the claim is weak or the tone excessive, so it should be reviewed before it is sent.

Opposition

Opposition is usually the cheapest way to stop a conflicting mark, because it acts before registration. At the OEPM, holders of earlier marks or trade names, and authorised licensees, can oppose within two months of publication in the Official Industrial Property Gazette (BOPI). At the EUIPO the period is three months. Miss it and the only route left is invalidity, which is slower.

Invalidity and revocation

Under the First Additional Provision LM, as amended by Royal Decree-law 23/2018, the OEPM has decided invalidity and revocation requests directly since 14 January 2023; courts hear them only as a counterclaim in an infringement case. Revocation for non-use is available where a mark has not been genuinely used in Spain for five years (art. 39 LM). And if you have tolerated a later registered mark for five consecutive years, knowing of its use, you can no longer seek its invalidity on the basis of your earlier right, unless it was applied for in bad faith (art. 52.2 LM).

Infringement action and damages

Article 41 LM lets the holder claim cessation, damages, removal of infringing goods and materials from the market, their destruction or donation, and publication of the judgment. Damages include lost profits and harm to the mark’s prestige, and may include investigation costs; the holder can choose between the economic consequences (including the infringer’s profits) or a lump sum at least equal to a licence fee (art. 43). When the court orders cessation, it sets a penalty of at least 600 euros per day until the infringement stops (art. 44). The action is time-barred after five years, and damages can only be claimed for acts in the five years before the claim (art. 45).

Before suing, two procedural points matter. The procedural rules of Title XII of the Patents Act 24/2015 apply to trademarks (First Additional Provision LM), including urgent evidence-gathering orders (art. 123) and preliminary injunctions (art. 128). And since 3 April 2025, Organic Law 1/2025 requires a prior attempt at negotiation before most civil claims are admitted, though not for preliminary injunctions requested before the claim or for preliminary measures (LO 1/2025, art. 5). A request to negotiate that defines the dispute also interrupts limitation (art. 7).

Which trademark enforcement step fits which threat?

A similar application has just been published: oppose within the deadline, possibly after a letter inviting withdrawal or limitation.
A conflicting mark is already registered but not yet used: invalidity before the OEPM or EUIPO, or a coexistence agreement.
An old, unused registration blocks your expansion: revocation for non-use.
A competitor uses a confusing sign: warning letter, then infringement action with a preliminary injunction if the harm is urgent.
Counterfeits online or at the border: platform notices, customs application for action and, for organised sellers, civil or criminal action.

What this means for your business

Set up a watch that matches your markets: OEPM, EUIPO, Madrid designations and the Latin American and African offices where you sell.
Agree response criteria in advance: which classes, which degree of similarity and which markets justify opposition.
Diary every deadline as soon as an alert arrives: two or three months for opposition, five years for tolerance and limitation.
Keep proof of use of your own marks; non-use is the first defence any opponent will raise.
Document each step, because the letter, the opposition and the evidence will be reused if the case reaches court.

If you want watch and enforcement handled together, our trademark watch and enforcement service covers the full ladder, and it connects with the trademark registration and portfolio work that supports every claim.

Where companies get trademark defence wrong

Missing the opposition window. Two months pass quickly; after that, invalidity takes longer and costs more.
Tolerating for too long. Five years of known coexistence can turn a strong earlier right into one you can no longer use against a later registration.
Sending a letter before preserving evidence, so the website or listing disappears and reappears elsewhere.
Suing on marks that have not been used: if the defendant asks, you must prove genuine use in the five years before the action (art. 41.2 LM).
Handling each country separately, with advisers who do not share alerts or strategy.

Most of these failures are coordination failures. A single team that runs the watch, the deadlines and the litigation sees the full picture and can choose the cheapest rung that solves the problem.

Frequently asked questions

What is the difference between a trademark watch and trademark enforcement?

A watch is the monitoring: it detects new applications and uses of similar signs in the registers and on the market. Enforcement is what you do with an alert: a warning letter, an opposition, an invalidity or revocation request, or an infringement action. A watch without a response plan only tells you about problems; enforcement without a watch usually starts too late.

How long do I have to oppose a trademark application?

Two months from publication of the application in the BOPI for Spanish marks, and three months from publication for EU trade marks at the EUIPO. Each national office in Latin America and Africa sets its own period. After the deadline, the usual route is an invalidity request once the mark is registered.

Can I still act if someone has used a similar mark for years?

Often yes, but time matters. Civil infringement actions in Spain are time-barred five years after they could be brought, and damages cover only the previous five years. If the other party registered its mark and you knowingly tolerated its use for five consecutive years, you generally lose the right to seek invalidity, unless it acted in bad faith.

Can IP Global Guard run our trademark watch and enforcement?

Yes. We set up the watch across the registers that matter to you, assess each alert, and prepare and coordinate letters, oppositions, invalidity requests and court actions, directly before the OEPM and EUIPO where our professionals are entitled and through qualified representatives otherwise. In Latin America and Africa we coordinate local correspondents.

How IP Global Guard protects your marks against third parties

Effective trademark defence is mostly about acting on the right rung at the right time. IP Global Guard, the IP services line of META Channel Corporation Limited, runs watch and enforcement across more than 25 jurisdictions in Europe, Latin America and Africa, with one point of contact, one strategy and one billing relationship.

Tell us which marks you need to protect, in which classes and countries, and any conflicts already on your radar. We will propose a watch scope, a response plan and the deadlines to diary. Contact our trademark enforcement team.

This article is general information, not legal advice, and does not replace an assessment of your specific case.

Trademark watch and defence against third parties: from alert to lawsuit

Key takeaways

What does a trademark watch cover?