Trademarks are one of the most important and valuable assets of companies and professional persons.
Thanks to trademarks consumers identify not only the origin of products and services but also the quality, features and other characteristics. A trademark also allows distinguishing products or services from its competitors.
Through a Trade Name or Commercial Name consumers identify the natural or legal person responsible for a product or service in the economic traffic. However, commercial names must not be confused with the company or corporate name which is registered solely and exclusively in the Commercial Registry. The company name’s function is to identify the company in legal transactions as a subject of rights and obligations.
There are three types of TRADEMARKS, the Individual Trademarks that identify products and services and the Collective Marks and the Guarantee Marks.
The Collective Marks serve to distinguish the products or services of the members of an ASSOCIATION in the market from the rest of the products and services in the market. Only ASSOCIATIONS of producers, manufacturers, traders or service providers with legal capacity or legal persons in general may be owners of this type of mark.
All collective marks are accompanied by REGULATIONS OF USE, which are compulsory for those who use them and which regulates the conditions of use of the mark.
The Guarantee Marks seek to certify certain characteristics of the goods and services (for example, their quality) and may be used by a number of companies or persons under the control and authorization of their owner in order to certify that the products or services to which they are applied comply with certain requirements described in the regulations of use of the said mark.
All Guarantee Marks must therefore be accompanied by a RULES OF USE that establish the conditions, requirements and controls for the use of the mark by authorized persons.
¿DID YOU KNOW THAT…
From the 1st of May 2019 you can register in Spain TRIDIMENSIONAL or SOUND marks, or marks consisting of SMELLS, COLOURS, HOLOGRAMS?
From the 1st of May 2019 you can register in Spain TRIDIMENSIONAL or SOUND marks, or marks consisting of SMELLS, COLOURS, HOLOGRAMS?
For this reason, when choosing a trademark it is advisable to contact a professional to carry out appropriate searches and investigations in order to ensure that there is no risk of confusion or association with other prior signs: trademarks, trade names or intellectual property rights within the commercial area where there is a wish to act.
With no previous search, you could be infringing the rights of third parties and at any time you might be required to change your trademark with the corresponding costs and prejudices.
You must ensure the exclusive use of your trademark in a country or jurisdiction by registering the trademark in the corresponding trademark registry.
Trademarks in Spain and Europe are granted for an uninterrupted period of ten years.
The registration of a trademark is made according to the type of products or services to be identify with it. These products and services are ordered in the Nice International Classification in a total of 45 classes : 34 classes for products (1 to 34) and 11 classes for services ( 35 to 45).
¿DID YOU KNOW THAT…
In SPAIN, a company or an individual can be the holder of SEVERAL COMMERCIAL NAMES that allow them to be identified differently in different commercial sectors of the market?
In SPAIN, a company or an individual can be the holder of SEVERAL COMMERCIAL NAMES that allow them to be identified differently in different commercial sectors of the market?
WHERE TO REGISTER A TRADEMARK?
Where to register a trademark will depend on where the products or services are to be used or rendered, either by the owner or by third parties (licensees) with the owner’s consent.
If the company plans to market its products in only one country, it may be convenient and sufficient to register its trademark in that country. In Spain the office in charge is the Oficina Española de Patentes y Marcas (OEPM).
If the company intends to operate in several member countries of the European Union, it is usually advantageous to register a European Union trademark at the European Intellectual Property Office (EUIPO) located in Alicante (Spain).
If the company focuses in several points of sale around the world, instead of registering the trademark in each of these countries, it might from an economic point of view more interesting to extend internationally its previous trademark using the Madrid System of International Registration of Trade Marks managed by World Intellectual Property Organization (WIPO) based in Geneva (Switzerland).
If the company s potential market is Africa, it may be worth to use one of the two regional offices in Africa: The Organisation Africaine de la Propriété Intellectuelle (OAPI) which includes most of the French-speaking countries or African Regional Intellectual Property Office (ARIPO) covering ten English-speaking African countries.
ADVANTAGES OF REGISTERING YOUR TRADEMARK OR TRADE NAME
Trademarks allow their owner to exercise an exclusive right of use against third parties using an identical or similar sign if there is a likelihood of confusion or association.
Trademarks ensure that consumers are able to distinguish the goods and services from those of their competitors.
Trade names and brands allow companies to project their image and reputation.
The use of the trademarks can be licensed to third parties providing an additional source of income.
These assets represent a determining factor in franchise agreements, where trademarks allow the consumer to identify the franchise.
Both trademarks and trade names are valuable business assets that can be used to obtain financing.
Our firm will help you to design the best strategy to protect and enjoy your brand portfolio in Spain, Europe and the rest of the world through our wide net of IP associates. Do not hesitate to contact us for further information.
SERVICES
Availability trademark searches
Similarity searches
Identity searches
Searches by owner/holder
Trademark registration in Spain
Trademark registration in the European Union
International trademark registration (free designation of several countries)
Registration of trademarks in any country
Trademark monitoring service
Oppositions and appeals
Trademark maintenance service
Control and payment of renewal fees
License, assignment and co-existence agreements of trademarks