Trademarks are distinctive signs whose primary function is to distinguish and identify products or services released by an entrepreneur into a market from products and services offered by its competitors. It also plays an important role in advertising and the creation of a reputation. Distinctive signs, especially trademarks, are an effective and necessary tool for corporate policy and for consumer protection.
When launching a product or service with an identifiable brand in a Spanish market, one needs to check that:
- The brand is free for use
- The brand is free to be registered
- The brand has no negative connotations, ie. it is commercially appropriate
Before marketing, it should be verified that there is no identical or similar trademark previously registered so as to distinguish identical or similar products from ours, which could prevent us from using the sign in that region.
Once it has been determined that no prior rights of third parties are being violated, it should be considered the different ways in which to register the brand in order to secure exclusive rights and the power to prevent other companies from using the trademark. To register, it must also be verified that the trademark is not generic, deceptive, too detailed, or contrary to public order.
Since April 1996, the procedures by which a registration can be filed efficiently in Spain are as follows:
The registration can be granted by the Spanish Patent and Trademark Office (SPTO). These trademarks may consist of a large number of signs capable of being represented graphically, among which include: words, first and last names, signatures, numerals and their combinations, slogans, drawings, signs, sounds, colors, and three-dimensional shapes, including packaging and wrappers. Based on the aforementioned types, the SPTO may not automatically reject brands that engage in the above prohibitions, but they have created a computer search at your request for information about holders of earlier identical or similar signs that might have an interest in opposing certain designs.
The registration of a trademark is granted for a term of 10 years, renewable indefinitely for periods of identical duration. However, registration may be forfeited if the trademark is not renewed, if it is not the subject of actual use for an uninterrupted period of five years, or the mark becomes too generic or misleading to distinguish these goods or services from others. .
A new feature was the creation of electronic office for the Spanish Patent and Trademark Office by order of the Ministry of Industry on 9 March, 2010. The SPTO is well-integrated into the inter-ministerial initiative to move the public to the digital age in order to facilitate and streamline administrative procedures relating to industrial property rights.
Madrid Agreement/Madrid Protocol: The so-called international system consists of the Madrid Agreement of 1891 and Madrid Protocol of 1989 (also relating to the Madrid Agreement), and are both administrated by the World Intellectual Property Organization (WIPO), which is based in Geneva.
It should be noted that although known as the international system, strictly speaking, it is simply a system in which administrative procedures have been unified and by which, ultimately, consists of multiple national registers.
The applicant must designate all the countries where he would want brand protection and, as such, these countries should have ratified either the Agreement and/or the Protocol, depending on the agreement on which the application being process is based. Subsequently, WIPO will notify the national Offices of these designated countries and, within one year (in the case of the Agreement) or 18 months (in case of the Protocol) and if the registration is not in conflict with the national law where these offices are based, the trademark is registered. This is not an open system, however,, since they only entitle certain individuals or legal entities which have an association (because of their nationality, domicile, or real or effective establishment) with a country that is party to one or both of the treaties mentioned, and may, on the basis of a registration or application with the trademark Office of the State, obtain an international registration effective in all or some of the countries who are members of the Madrid Union.
What constituted the most recent advancement was the incorporation of the Spanish language into the processing of trademark applications in the System of International Registration as of 1 April 2004. The assimilation of Spanish into English and into French (until now, the only procedural languages recognized) has helped, without a doubt, develop the exchange of trade relations from the perspective of the internationalization of Spanish companies abroad by attracting international business to Spanish markets.
This initiative will also facilitate compliance with the system of international registration of trademarks in Latin American countries by enabling businesses to file and process international trademark applications in their own language, thereby reducing costs and enhancing the simplicity of processing.
The main characteristics of the community trademark is its unitary character. The process only requires one process and only one registration, which provides the owner registered protection through the European Union, covering 27 States.
The community trademark, by means of a single registry, covers a market of 500 million consumers.
It’s important to mention that the community trademark does not replace the trademark rights of Member States.
The national and international systems and the community trademarks can coexist and in some cases, complement each other.
The community trademark system allows, through a single application and single process, the business to obtain a single registration granting direct protection in all member countries of the European Union. Therefore, the entrepreneur who wants to market their products or provide services throughout Europe, instead of submitting an application in each country where he intends to market his products, may get an EU registration, allowing exclusive rights of the trademark in all States of the EU. It is noteworthy to add that the community trademark is a system open to virtually all companies in the world, and entitles any and all companies to apply if domiciled or established in the European Union, or in a country who is a signatory to the Paris Convention or domiciled in a country who is a member of the World Trade Organization.
The community trademark is administered by the Office for Harmonization in the Internal Market (OHIM), which is based in the city of Alicante (Spain). Trademark applications may be submitted in any of the official languages of the European Union, although the applicant must designate a second language among the five offices of the OHIM (German, English, Spanish, Italian, and French) in case there are opposition, revocation or invalidity action proceedings which may need to be in this second language.
Another great advantage of the community trademark is there is no use requirement for the obtaining of the registration, because the use of the trademark in a single country of the European Union is usually sufficient to maintain its validity. Additionally, the drastic reduction of the fees for registration of community trademarks, as of May 2009, is an undeniable incentive to opt for this registration system.
Registration is granted for 10 years and is renewable, subject to a fee, for identical periods of time. The community trademark gives its owner in the entire territory of the European Union the right to exclude others from using it without his consent, as well as, protects against the use of identical or similar brands that could create a risk of confusion among consumers. It is very important to mention that if there is a violation, it is possible to sanction the violator in any State of the European Union. Matters concerning violation of the community trademark can be heard by the national Community Trademarks Court, as designated by each State.
With regards to community trademarks, we refer to the Organic Law 8/2003 of 9 July for Bankruptcy Reform, which amended the Organic Law of 6/1985 of 1 July by the Judiciary, which designates that the commercial courts and the relevant section of the Provincial Court of Alicante as Spain’s community trademark courts, in first and second instances, respectively, extend its jurisdiction, to this end, to the whole country.
This article is not considered as legal advice