Likelihood of Confusion in Spain: How the OEPM Assesses Conflicting Trade Marks (Articles 6–10)

Likelihood of confusion is the central concept in Spain’s system for resolving conflicts between trade marks. Under Articles 6 through 10 of Ley 17/2001 (the Trade Mark Act), a trade mark application may be refused — on opposition by a third party — if it is identical or similar to an earlier mark and the goods or services are identical or similar, creating a likelihood of confusion on the part of the public. Spain follows the EU framework for assessing confusion, including the critical interdependence principle, which means that a high degree of similarity between marks can offset a lower degree of similarity between goods, and vice versa.

The Legal Framework: Relative Grounds for Refusal

The relative grounds for refusal are set out in Articles 6 through 10 of the Trade Mark Act. The most important provisions are:

• Article 6(1)(a): An application shall be refused where the sign is identical to an earlier trade mark and the goods or services are identical. In this case, likelihood of confusion is presumed and need not be separately proven.
• Article 6(1)(b): An application shall be refused where, because the sign is identical or similar to an earlier trade mark and the goods or services are identical or similar, there exists a likelihood of confusion on the part of the public, including the likelihood of association with the earlier mark.
• Article 8: Trade marks with a reputation (“renombre”) in Spain enjoy enhanced protection. An application may be refused where the sign is identical or similar to an earlier mark with a reputation, even for non-similar goods or services, if use of the later mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark.

Crucially, the OEPM does not examine relative grounds ex officio. These grounds are considered only when raised through an opposition filed by the owner of the earlier right within the 2-month window, or in subsequent invalidation proceedings.

The Three Dimensions of Similarity

The OEPM and Spanish courts assess the similarity of marks across three dimensions, following the framework established by the CJEU:

Visual Similarity

This examines the overall visual impression of the marks, including the length of words, the arrangement and sequence of letters, shared letter groups, the presence or absence of figurative elements, colours, and visual composition. For word marks, the beginning and the ending of the word carry particular weight, as consumers tend to focus on these parts. For figurative or composite marks, the relative dominance of the word element versus the design element is assessed.

Phonetic (Aural) Similarity

This examines how the marks sound when spoken aloud. In Spain’s market, phonetic similarity carries significant weight, particularly for goods that are commonly requested verbally (such as food, beverages, and fashion). The assessment considers the number of syllables, the rhythm and cadence, the dominant vowel and consonant sounds, and the position of stressed syllables. Spanish pronunciation rules apply, even to foreign-language marks.

Conceptual Similarity

This examines whether the marks convey the same or a similar meaning or idea. Two marks that are visually and phonetically different may still be confusingly similar if they evoke the same concept. For example, a word mark and a figurative mark both evoking the concept of a lion would be conceptually similar. Translations between languages are captured: a Spanish word and an English word with the same meaning may be found conceptually identical if the average Spanish consumer understands both.

Importantly, conceptual differences can sometimes neutralise visual or phonetic similarities. If at least one of the marks has a clear and specific meaning that the consumer would immediately grasp, the conceptual difference may counteract similarities in appearance or sound.

The Interdependence Principle

The interdependence principle is a cornerstone of likelihood of confusion assessment under both Spanish and EU trade mark law. It means that the various relevant factors — similarity of marks, similarity of goods, and distinctiveness of the earlier mark — are not assessed in isolation but in relation to each other.

In practical terms:

• A high degree of similarity between the marks can establish likelihood of confusion even where the goods or services are only somewhat similar.
• A high degree of similarity between the goods or services can establish confusion even where the marks themselves are only moderately similar.
• A highly distinctive earlier mark (whether inherently or through acquired reputation) enjoys a broader scope of protection, meaning that confusion is more readily found.
• Conversely, where both the similarity of marks and the similarity of goods are low, confusion is unlikely even if one of the factors shows some degree of overlap.

The interdependence principle was established by the CJEU in Canon v. MGM (C-39/97) and has been consistently applied by Spanish courts, including the Spanish Supreme Court (e.g., STS 497/2017). The OEPM applies the same framework when deciding opposition proceedings.

The Global Assessment

The OEPM conducts a global assessment of likelihood of confusion, taking into account:

• The visual, phonetic, and conceptual similarity of the marks.
• The similarity of the goods or services (not limited to Nice Classification — the intrinsic relationship between the goods is what matters).
• The distinctive character of the earlier mark (inherent and acquired).
• The relevant public and their level of attention.
• The principle of imperfect recollection — the average consumer does not typically compare marks side by side but relies on an imperfect memory of the earlier mark.

No single factor is determinative. A finding of similarity in one dimension (e.g., phonetic) does not automatically establish confusion, but equally, dissimilarity in one dimension does not automatically defeat it. The assessment is holistic.

The Role of the Relevant Public

The assessment is based on the perception of the average consumer of the goods or services in question. The average consumer is deemed to be reasonably well-informed, observant, and circumspect, but does not exercise the same level of attention for all goods. For everyday consumer goods purchased on impulse, the level of attention is lower and confusion is more readily found. For expensive, specialised, or professional goods, the level of attention is higher and confusion is less likely.

Proof of Use in Opposition Proceedings

Since the 2018 amendment to the Trade Mark Act, applicants in opposition proceedings can require the opponent to provide proof of genuine use of the earlier mark during the five years preceding the application or priority date of the contested mark. If the opponent’s mark has been registered for more than five years and the opponent cannot demonstrate genuine use, the opposition is dismissed. This mechanism prevents owners of dormant marks from blocking new applications.

Strategic Recommendations

• Apply the interdependence principle in your analysis: When assessing the risk of a conflict, consider the similarity of marks and goods together, not in isolation. A moderate similarity on both axes may be sufficient to create confusion.
• Focus on phonetic similarity for Spanish consumers: In many product categories, particularly those requested verbally, phonetic similarity carries decisive weight in the Spanish market.
• Differentiate across all three dimensions: To reduce the risk of confusion, ensure your mark is distinct from prior marks visually, phonetically, and conceptually. Strength in one dimension does not compensate for weakness in another.
• Use the proof of use request: If the opposing mark has been registered for more than five years, requiring proof of use is a powerful tactical tool that may eliminate the opposition entirely.
• Consider the distinctiveness of the earlier mark: Highly distinctive marks enjoy a broader scope of protection. If the earlier mark is weak or descriptive, the scope of protection is narrower, and coexistence may be possible.

Common Mistakes

• Focusing on only one dimension of similarity: Visual differences do not matter if the marks sound identical. Conceptual similarities can override visual and phonetic differences, and vice versa.
• Ignoring the interdependence principle: Moderate similarity on both the marks axis and the goods axis may be sufficient for confusion, even where neither factor alone seems particularly strong.
• Assuming Nice Classification determines goods similarity: Goods in different classes may be similar (e.g., clothing and footwear), and goods in the same class may not be (e.g., chemicals for photography and chemicals for agriculture). The intrinsic relationship matters, not the classification.
• Overlooking conceptual neutralisation: If the marks have clearly different meanings that consumers would immediately recognise, this conceptual difference may neutralise visual or phonetic similarities.
• Failing to request proof of use: The proof of use mechanism was only introduced to Spanish opposition proceedings in 2018. Some applicants and practitioners still overlook this powerful defence.

Key Takeaway

Likelihood of confusion assessment in Spain follows the EU framework: a global, multi-factor analysis that weighs the similarity of marks and goods in light of the interdependence principle. High similarity in one factor can offset lower similarity in another, and the assessment is always made through the eyes of the average Spanish consumer relying on imperfect recollection. Because the OEPM does not examine relative grounds ex officio, these principles come into play only when an opposition or invalidation action is filed. For both applicants and opponents, a thorough understanding of the interdependence principle is essential to predicting outcomes and building effective arguments.