Trademarks
Trademark protection is the most active area of our practice. We advise on the selection, registration, prosecution, defence and commercial exploitation of trademarks and trade names across European, Latin American and African jurisdictions, as well as under the international systems administered by WIPO.
Scope of work
Searches & clearance
Availability searches and clearance opinions before adoption of a new mark.
Registration & filing
Registration before EUIPO and OEPM, international registration under the WIPO-administered Madrid System through the appropriate Office of origin, and national filings across Latin America and Africa through coordinated local counsel.
Prosecution
Response to office actions, examiners’ refusals, third-party observations and absolute grounds objections.
Opposition & disputes
Opposition proceedings, cancellation actions, invalidity actions and revocation proceedings, acting for both opponents and applicants.
Watching
Trademark watching services: ongoing monitoring of new applications that may conflict with the client’s portfolio.
Renewals & maintenance
Renewals, recordals of assignments, changes of name and address, and ongoing portfolio maintenance.
Licensing & assignment
Trademark licensing, coexistence agreements, assignment and security interests.
A single point of contact coordinates the entire matter from clearance to renewal.
When to engage us
Launching a new brand
A new business launching a brand into the European market and needing clearance and registration.
Latin America into Europe
A Latin American company expanding into Europe and seeking efficient regional coverage through the Madrid System.
Europe into new markets
A European business entering Latin American or African markets and needing coordinated national filings.
Managing a portfolio
A holder of an existing portfolio that requires consolidated management, watching and renewal across multiple jurisdictions.
Jurisdictions
Representation before EUIPO and OEPM, directly where our professionals are entitled to act and otherwise through qualified representatives. International filings through the WIPO Madrid System via the Office of origin where required. Coordinated representation before national offices in Latin America, Africa and the rest of Europe through correspondent counsel.
Frequently asked questions
How do I register a trademark in the European Union?
Registration begins with a single European Union trade mark (EUTM) application before the EUIPO which, once granted, protects your brand across all 27 member states. The EUIPO examines the application on absolute grounds, publishes it, and opens a three-month window for third parties to oppose. We handle the full process: clearance, classification of goods and services, filing, examination responses and any opposition, and we coordinate national or international filings where you need protection beyond the EU.
What is the Madrid System and when should I use it?
The Madrid System, administered by WIPO, lets you seek protection across more than 130 territories through a single international application based on a home (“basic”) mark and filed via your Office of origin. It centralises filing, renewal and portfolio changes in one procedure. It is most efficient when you need coverage in several jurisdictions at once — for example a Latin American company expanding across Europe — though for the first five years the international registration depends on the basic mark, which we factor into your filing strategy.
How long does a registered trademark last, and can I lose it?
A registered trademark generally lasts ten years from the filing date and can be renewed indefinitely for further ten-year periods. Two things can still cost you the right: failing to renew on time, and not putting the mark to genuine use — after five years of non-use a trademark becomes vulnerable to revocation. We track renewal deadlines and advise on use requirements across your whole portfolio.
What happens if someone opposes my trademark application?
Once your application is published, the holder of an earlier right can file an opposition within the opposition period if they believe your mark conflicts with theirs. The procedure usually opens with a cooling-off period for negotiation, followed by an exchange of arguments and evidence before the office decides. We act on both sides — defending applicants and enforcing earlier rights for opponents — and advise early on whether to negotiate, amend or proceed.
Do I really need a trademark search before applying?
A clearance search is strongly advisable. Filing without one risks refusal, opposition, or an infringement claim once you have already invested in the brand. A proper search looks beyond identical marks to confusingly similar ones across the relevant classes and territories. We provide availability searches and clearance opinions before you adopt a new mark, so you commit to a name that is genuinely free to use.
What is the difference between an EU trademark and a national (Spanish) trademark?
An EU trade mark is a single right covering all 27 member states through the EUIPO; a Spanish national mark, filed before the OEPM, covers Spain only. The EU mark is usually more cost-effective when you need several EU markets, but a single earlier right in one country can block it entirely, whereas a national mark is more contained. We advise on the right route — EU, national, or a combination — based on where your business actually operates.
Can I protect my trademark in Latin America and Africa?
Yes. We coordinate national filings across Latin American and African jurisdictions through correspondent counsel, and use the Madrid System where the country is a member. In Africa we also work through the regional systems — OAPI for French-speaking states and ARIPO for English-speaking ones. You keep a single point of contact for the whole Europe–Latin America–Africa corridor.
Do I need a representative to file, or can I do it myself?
Anyone can file in principle, but applicants without a domicile or establishment in the European Economic Area must appoint a professional representative to act before the EUIPO. Beyond the formal requirement, the value of representation lies in getting the classification, strategy and defence right — the decisions that determine whether the registration actually protects you. We act as that single coordinated representative across the corridor.
