Trade mark characteristics
In order to be eligible for registration, a sign must be capable of representation. Generally, this is a name or a figurative sign, but it may equally well be a sound.
- In order to be eligible for registration, a trade mark must be lawful. Thus, the trade mark cannot be contrary to public policy or morally forbidden
- A trade mark cannot be deceptive. That is, it cannot be misleading regarding product characteristics or qualities
- A trade mark must be distinctive. It cannot be descriptive of the product or be a term commonly used to designate a product or service
- Finally, it must be available, that is to say, it must not affect prior rights: trade mark, copyright, designation or company name, etc.
Lastly, a trade mark is subject to the principle of speciality. This means that it is protected only for the category of products or services indicated at registration.
Strategy of registration
National trade mark
A national trade mark is the simplest solution in order to protect a trade mark in Spain or only in some countries. The request is presented before the Spanish Patent and Trademark Office. The office proceeds to a control of substance and form. Then, the deposit is published to allow third parties the opportunity to oppose it. The trade mark holder is then protected against the use of his or her trade mark in the Spanish territory for the products or services category indicated.
Community trade mark
A community trademark is a unitary trade mark. The application for registration is submitted to the Office for Harmonization in the Internal Market (OHIM). The principle is that if registration is refused on the ground of wrongfulness, descriptiveness, deceptiveness or violation of prior rights in one of the member states, it prevents trade mark registration in all the countries. It will, afterwards, be necessary to make national requests. Once registered, the trade mark receives protection in the entire territory of the European Union.
International trade mark
The Madrid Agreement and Protocol protects a trade mark at the international level. The Madrid system includes 96 members. It is one single application in only one language. The trademark is registered in one of the member countries with the World Intellectual Property Organization (WIPO). Then, every national office conducts an examination. These trade marks are dependent on the original national trade mark. If the latter falls down, it takes the international trade mark with it. With regard to the protection granted, it confers the same rights as a national trade mark.
Defence of a trade mark
A trade mark holder benefits from an exploitation monopoly. Counterfeiting may be defined as an infringement of intellectual property rights. It consists of products or services imitation or reproduction without having received consent of the trade mark holder. Infringement proceedings are used to ban third parties from using the trade mark and to recover damages according to the harm suffered. These proceedings are conducted within the national jurisdictions. Thus, a counterfeiting detected in Spain will be before the Spanish courts whether it concerns a national, community or international trade mark and will be partly governed by Spanish law.
Therefore, Spanish legal counsel is necessary when registering and defending a trade mark.
Jade Pilato & Nicolás Melchior
This article is not considered as legal advice